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THE    LAW 


OF 


Unfair  Business  Competition 


INCLUDING  CHAPTERS 


ON 


Trade  Secrets  and  Confidential  Business  Relations; 
Unfair   Interference   with   Contracts;    Libel 
and  Slander  of  Articles  of  Merchan- 
dise, Trade  Names,  and  Business 
Credit  and  Reputation 


BY 

HARRY  D.  NIMS 

Of  New  York  Bar 


NEW    YORK 
BAKER,     VOORHIS     &    CO. 

1909 


Copyright  1909 

by 
Harry  D.  Nims 

T 


* 

r 


INTRODUCTION. 


There  is  a  maxim  as  old  as  law,  that  there  can  be  no  right 
without  a  remedy,  but  it  is  equally  true  that  men  are  constantly 
acquiring  new  rights  and  new  kinds  of  property  almost  un- 
known to  the  law,  and  in  lawful  ways  are  putting  themselves 
into  new  positions,  in  which  they  soon  suffer  wrongs  which 
the  courts  seem  powerless  to  prevent,  or  to  end.  It  seems, 
sometimes,  as  if  the  progress  of  the  unscrupulous  merchant 
and  manufacturer  in  inventing  new  schemes  for  filching  away 
the  trade  of  others  unfairly,  has  been  far  more  rapid  than 
that  of  the  courts  in  finding  ways  of  protecting  the  honest 
business  man  against  such  schemes.  But  whatever  has  been 
the  activity  of  these  unscrupulous  members  of  the  business 
community  in  the  last  decade,  during  this  time  very  marked 
progress  has  been  made  by  the  law  in  developing  rules  and 
remedies  relating  to  dishonest  and  unfair  commercial  practices. 

It  is  but  a  few  years  since  cases  involving  applications  for 
relief  against  unfair  dealing  were  indifferently  classed  as 
trade  mark  cases  or  injunction  cases,  or  hidden  away  in  di- 
gests under  headings  most  surprisingly  disassociated  from 
ideas  conveyed  by  the  term  Unfair  Competition.  Now  we 
find  that  the  phrases  "  Passing  Off,"  in  England,  "  Concur- 
rence DeLoyale  "  in  France  and  "  Unfair  Competition  "  in 
America  are  recognized  legal  terms,  embracing  rules  of  law 
applicable  to  cases  of  this  character. 

One  reason  for  the  growth  of  the  law  of  unfair  competition 
is  probably  to  be  found  in  the  effects  of  the  delay  incident 
to  suits  at  law  for  damages.  Business  lost  and  credit  injured 
by  misrepresentation  or  threats  made  by  malicious  or  un- 
scrupulous competitors,  injury  to  brands  of  goods  by  the  sale 
of  inferior  imitations,  injury  to  reputation  by  fraudulent  use 
of  the  name  of  a  business  house,—  such  losses  cannot  be  com- 
pensated for  Try  damages  recovered  at  the  end  of  a  tedious 

[iii] 


7355v '<> 


iv  Introduction. 

suit  at  law,  occupying  perhaps  two  or  three  years.  Any  ade- 
quate remedy  must  stop  the  injurious  acts  instanter,  and  this 
can  be  afforded  only  by  use  of  the  writ  of  injunction. 

The  law  of  unfair  competition  has  developed  in  part  also 
in  response  to  a  general  feeling  that  the  honest  and  fair-deal- 
ing merchant  is  entitled  to  the  fruits  of  his  skill  and  industry, 
and  must  be  protected  against  loss  caused  by  fraudulent  and 
unfair  methods  used  by  business  rivals.  It  is  a  recognition  by 
the  courts  of  the  duty  to  be  honest  and  fair  in  all  relations 
of  business  life.  This  is  one  of  the  most  healthful  signs  of  the 
times.  The  gradual  judicial  development  of  this  doctrine 
is  an  embodiment  of  the  principles  of  sound  common  sense, 
business  morality,  although  it  involves  nice  discriminations 
between  what  may  and  what  may  not  be  done  in  honorable 
business  rivalry. 

Just  what  acts  are  to  be  included  in  the  term  competition 
it  is  hard  to  state.  Formerly,,  business  houses  made  the  favor 
of  the  customer  the  principal  object  of  their  efforts.  Now 
very  often  the  customer  figures  little  —  the  struggle  being  to 
obtain  special  privilege,  monopoly  or  special  rates,  or  to  injure 
a  competitor  by  ousting  him  from  some  vantage  ground  he 
has  gained,  or  by  inducing  a  breach  of  his  contracts.  All 
these  acts  are  a  part  of  the  struggle  for  commercial  success. 
They  are  acts  done  in  business  competition,  and  some  of  them 
are  fair  and  honest  methods  of  business  rivalry  and  some  are 
not.  No  attempt  is  here  made  to  deal  with  all  of  them.  But 
the  fundamental  rule  that  in  business  rivalry,  no  unfair  or 
dishonest  methods  shall  be  tolerated,  applies,  on  principle,  to 
all  of  them. 

Closely  akin  to  the  doctrines  involved  in  the  cases  which 
are  now  definitely  classed  as  unfair  competition  cases,  are 
many  undecided  questions  of  large  moment,  just  now.  The 
right  of  persons,  and  especially  corporations  and  associations, 
to  compete  by  trying  to  eliminate  and  efface  rivals  from  the 
race;  the  right  of  the  multitude,  acting  in  concert  to  do  acts 
which  are  unquestionably  the  right  of  an  individual  acting 
alone  to  do;  the  legality  of  acts  (otherwise  legal)  which  are 
done  with  the  definite  intent  to  unfairly  injure  another  but 


Introduction.  v 

done  merely  as  a  part  of  the  business  struggle  to  succeed  and 
make  money;  these  and  many  similar  problems  are  yet  to  be 
solved  in  the  light  of  present-day  conditions. 

Courts  and  legislatures  cannot  create  fairness  and  honesty. 
Men  must  be  free  to  manage  their  business  enterprises  in  their 
own  way.  There  must  be  competition.  It  is  said  that  the 
doctrine  long  upheld  by  common  law,  that  competition  must 
be  free  and  unrestricted  has  brought  about  the  very  evil  of 
monopoly  which  the  doctrine  was  aimed  to  prevent.  Never- 
theless, competition  cannot  be  abolished;  and  it  will  be  a 
long  time  before  it  ceases  to  play  a  very  important  and  bene- 
ficial part  in  our  civilization  if  its  rules  are  founded  in 
fairness  and  honesty. 

Modern  science  has  transformed  into  wealth  much  that  in 
former  days  was  waste.  Similarly,  modern  conditions  have 
given  very  great  importance  and  value  to  parts  of  a  business 
which  formerly  were  considered  worthless.  And  now  the 
question  is  raised  as  to  whether  these  new  values  are  prop- 
erty,— the  sort  of  property  which  equity  protects?  If  they 
are,  then  the  jurisdiction  of  our  equity  courts  seems  broader, 
in  this  respect,  than  is  usually  recognized. 

President  Taft  in  his  inaugural  address  in  1909,  says :  "  The 
proposition  that  business  is  not  a  property  or  pecuniary  right 
which  can  be  protected  by  equitable  injunction  is  utterly  with- 
out foundation  in  precedent  or  reason.  The  proposition  is 
usually  linked  with  one  to  make  the  secondary  boycott  lawful. 
Such  a  proposition  is  at  variance  with  the  American  instinct, 
and  will  find  no  support  in  my  judgment  when  submitted  to 
the  American  people.  The  secondary  boycott  is  an  instru- 
ment of  tyranny,  and  ought  not  to  be  made  legitimate." 

In  the  following  pages  will  be  found  references  to  the  dis- 
cussion as  to  the  power  of  equity  to  protect,  not  only  the 
tangible  parts  of  a  business,  but  also  its  intangible  rights  and 
properties.  The  right  decision  of  these  questions  is  of  far- 
reaching  importance  to  the  manufacturer  and  trader  today, 
for  unless  the  writ  of  injunction  is  preserved  in  its  present 
form,  both  labor,  capital  and  the  general  business  world  will 
lose  their  most  effective  bulwark  against  unfair  and  dishonest 
business  practices. 


vi  [Introduction. 

In  compiling,  arranging  and  interpreting  the  authorities  in- 
eluded,  the  writer  has  been  very  greatly  aided  by  the  able 
work  of  Frederick  Me  Herrick,  Esq.,  of  the  New  York  Bar, 
and  he  wishes  here  to  express  his  obligation  to  Mr.  Herrick  in 
that  regard. 

This  volume  refers  only  to  the  American  and  English  cases 
and  statutes.  There  are  French  statutes  dealing  with  various 
features  of  unfair  competition  and  many  decisions  of  French 
courts  relating  to  it.  It  has  been  thought  wise  not  to  attempt 
to  treat  them  here,  but  instead  to  refer  the  reader  for  infor- 
mation to  such  works  as  M.  Pouillet's  book,  "  Traite  des 
Marques  de  Fabrique  et  de  la  Concurrence  Deloyale,"  Paris, 
1906. 

HARRY  D.  NIMS. 

32  Nassau  Street,  New  York. 

April,  1909. 


CONTENTS. 


CHAPTER  I. 

What  is  Unfair  Competition  ? 

PAGE. 

Section    1.  Unfair  competition  is  not  included  in  term  trade-mark 1 

2.  Technical   trade-marks 3 

3.  Common  law,  not  trade-mark  statutes,  the  basis  of  the  law  of 

unfair  competition 5 

4.  Difference  between  law  of  unfair  competition  and  that  of  tech- 

nical trade-marks 7 

5.  Technical  trade-mark  is  geographic  in  character,  the  right  to  it 

is  limited  territorially;   not  so  with  rights  upheld  by  law  of 

unfair  competition 11 

6.  Early  uses  of  the  term  unfair  competition 11 

7.  Growth  of  doctrine  of  unfair  competition 13 

8.  Early  cases  involving  unfair  competition 14 

9.  Law  of  unfair   competition  does  not  curtail  freedom  of  honor- 

able trading 19 

10.  Property  rights  in  marks  which  are  not  technical  trade-marks.  .  20 

11.  Exclusive  right  to  a  name  or  mark  not  necessary  to  action 23 

12.  Property  right  which   is  acquired  in  a  trade-mark  is  a  limited 

right 23 

13.  No  distinction  between  names  and  marks  as  regards  rights  ac- 

quired by  user 24 

14.  Definitions  of  unfair  competition 25 

15.  Selling  another's  goods  as  one's  own 30 

16.  Grounds  of  action  for  unfair  competition 30 

17.  Theory  that  the  court  aims  to  promote  honest  and  fair  dealing.  .  30 

18.  Theory  that  the  court  aims  to  protect  the  purchasing  public.  ...  31 

19.  Theory  that   the   court   aims  to   protect  not   public   rights,  but 

rights  of  individuals 33 

20.  Attitude  of  equity  courts  toward  personal  wrongs 37 

21.  What-  is  infringement? 40 

22.  Acts  contributory  to  unfair  acts 41 

CHAPTER  II. 

Intent  to  Defraud  —  Must  it  Be  Proved  ? 

Section  23.  Question  of  intent  is  a  plea  raised  by  defense 42 

24.  Division  of  cases  as  regards  intent 44 

25.  Cases  holding  that  intent  is  immaterial 45 

26.  Cases  holding  intent  must  be   proved 51 

27.  Fraudulent  intent  may  be  presumed 54 

[vii] 


viii  Contents. 

PAGE. 

Section  28.  No  actual  proof  of  intent  necessary  for  presumption 54 

29.  Knowledge    of    plaintiff's    rights    on    part    of    defendant    is    un- 

necessary        55 

30.  Denial  of  intent  will  not  avail  defendant 59 

31.  Proof  of  specific  orders  to  his  agents  and  servants  to  act  fairly 

will  not  excuse  defendant 61 

32.  Actual  injury  to  plaintiff  by  defendant  must  be  imminent 61 

33.  Unimportant  facts  not  a  basis  of  presumption  of  intent  to  de- 

fraud        62 

34.  Presumption  may  arise  from  similarity  of  name  or  get-up 62 

35.  Presumption  of  fraud  arises  from  so  selling  goods  that  vendees 

may  pass  them  off  fraudulently 66 

36.  Presumption  may  be  based  on  manner  in  which  the  truth  is  told.      63 

CHAPTER  III. 

What  is  Similarity  ? 

Section  37.  Test  of  similarity  is  general  impression  made,  not  detailed  ex- 
amination       71 

38.  Similarity  does  not  mean  exact  likeness 72 

39.  Care  used  by  average  buyer  of  the  class  of  article  in  question 

must  be  considered 74 

40.  Character  of  the  article  and  the  habits  and  intelligence  of  the 

consumer 75 

41.  Comparison  is  not  the  test  of  similarity 77 

42.  Imitation  of  salient  features 78 

43.  Necessary    physical    requirements    of    the   article    must   be    con- 

sidered       79 

44.  Distance  between   competitors  a  factor   in   deciding  as  to   simi- 

larity       80 

45.  Deceit  of  ultimate  purchaser,  not  of  middleman,  is  the  important 

consideration 81 

46.  Similarity  of  color,  shape,  size,  etc 82 

47.  Similarity  of  names 83 

CHAPTER  IV. 
Good-Will. 

SECTION  48.  Definitions  of  good-will 89 

49.  Good-will  protected  by  law  of  Unfair  Competition 92 

CHAPTER  V. 
Transfers  of  Trade  Xames,  Signs,  Marks,  Etc. 

SECTION  50.  Names  not  transferable  —  artists,  musicians,  etc 95 

51.  Sale  of  entire  property  of  a  business  —  Rights  of  vendor 96 

52.  Presumption  that  no  one  intends  to  part  with  right  to  use  his 

own  name 97 


Contents.  ix 

PAGE. 

Section  53.  Name  may  be  so  sold   as   to  preclude  the  owners   from  again 

using  it  in  the  same  business 97 

54.  Sale  of  business  site,  effect  of  on  names 100 

55.  Good  faith  as  to  names  and  marks  required  of  vendors  thereof.  .  105 

56.  Transfer  of  portraits 105 

57.  Transfers  in  bankruptcy  and  in  assignments  for  creditors 107 

58.  Rights  of  retiring  stockholders  and  others  in  corporate  names..  109 

59.  Soliciting  old  customers 110 

60.  Sale  of  name  or  business  by  originator  of  an  article 114 

61.  Effect  of  locality  on  transfers  of  a  business 115 

62.  Partner's  rights  in  the  partnership  name  on  dissolution 116 

63.  Dissolution  by  death  of  a  partner 119 

64.  Transfers  by  descent  and  rights  of  descendants 121 

65.  Transfer  of  secret  formulae 123 

CHAPTEK  VI. 

Family  Names  'ok  Surnames,  as  Trade  Names. 

Section  66.  Nature  of  the  right  in  one's  own  name 125 

67.  What  constitutes  passing  off  by  use  of  surname 125 

68.  Rulings  of  equity  courts  directing  use  of  explanatory  words  with 

defendant's  name   130 

69.  Acquired  generic  or  secondary  meaning  of  names 138 

70.  Surnames  which  by  usage  become  abstract  names  of  objects.  .  .  .    144 

71.  Priority  in  use  not  resulting  in  secondary  meaning 146 

72.  Surnames  used  as  abbreviations 148 

73.  Names  made  up  of  surnames  with  ether  words  or  symbols 150 

74.  Surnames  acquired  otherwise  than  by  descent 150 

75.  Voluntary  change  of   personal  nam" 152 

76.  Rights  acquired  by  him  who  first  uses  a  surname  in  business.  .  .    153 

77.  Family  names  as  corporate  names 155 

78.  Rights  of  descendants  to  the  family  name  as  used  in  business  by 

an  ancestor 155 

79.  Summary 161 

CHAPTEK  VII. 

Miscellaneous  Business  Xames. 

Section  80.  Introductory 163 

81.  Business  names  as  distinguished  from  marks,  designs,  devices,  etc.  164 

82.  Difference  between  abstract  names  of  objects  and  business  names.  165 

83.  Secondary  or  acquired  meaning 165 

84.  Secondary  meaning  of  semi-geographic  names  such  as  "  Empire 

State,"  "  Hoosier,"  etc 170 

85.  Geographic  limits  in  which  secondary  meaning  becomes  known.  .  172 

86.  Existence  of  secondary  meaning  a  question  of  fact 174 

87.  Names.of  goods  intended  for  export 175 

88.  Lord  Kay's  summary  of  the  law  of  names 176 

89.  Names  considered  as  transitory  or  personal,  and  as  local  or  fixed.  177 


x  Contents. 

PAGE. 

Section  90.  Phrases  such  as  "  Formerly  with,"  and  "  Successor  to,"  etc 181 

91.  Signs 183 

92.  Street  addresses,  etc 186 

93.  Use  of  suffix  "  &  Co.,"  etc 188 

94.  Names  of  newspapers  and  magazines 188 

95.  Names  of  plays,  books,  text-books,  etc 193 


CIIAPTEE  VIII. 

Corporate  Names. 

Section    96.  Effect  of  a  state  charter  on  names  of  corporations 198 

97.  Foreign  and  domestic  corporations  —  rights  of,  as  to  name.  . .  .  200 

98.  Right  to  name  on  dissolution 201 

99.  Names  of  charitable  corporations 202 

100.  Names  of  fraternal  societies 204 

101.  Abbreviations  of  corporate  names 204 

102.  Affirmative  duty  to  differentiate  in  choosing  corporate  names..    206 

103.  Priority  in  time  of  ine  of  a  name  is  ground  for  injunction.  .  ..   215 

104.  Use  of  term  "  works.'"  "  company,"  etc.,  by  a  concern  not  in- 

corporated   ." 216 

105.  Outgoing  stockholders  and  employees 217 

106.  False  or  misleading  use  of  corporate  names 221 

107.  Names  of  unincorporated  societies,  clubs,  etc 223 

108.  Similarity  of  corporate  names,  what  is 224 


CHAPTER  IX. 

Geographic  or  Place  Names. 

Section  109.  Rule  of  priority 227 

110.  One  of  several  who  use  a  common  geographic  name  may  sue  on 

behalf  of  all 228 

111.  Association  of  the  name  and  the  locality  must  be  close 231 

112.  Secondary  or  acquired  meaning 231 

113.  Universal  knowledge  of  user  not  required 233 

114.  Extent  of  district  to  which  a  name  applies 233 

115.  Length  of  user  necessary  to  acquire  secondary  meaning 235 

116.  Place  names  may  acquire  abstract  meaning 235 

117.  Secondary   meaning   acquired   in    one   kind   of   business   is   not 

applicable  to  others 236 

118.  Degree  of  resemblance  necessary 236 

119.  Geographic  or   place  names   which    indicate   origin   and   source 

falsely 236 

120.  Relative  location  of  plants  of  rivals  —  Effect  on  names 239 

121.  Power  of  equity  to  limit  use  of  the  name  of  a  locality  to  those 

doing  business  in  that  locality 241 

122.  Names  of  cities 241 

123.  Effect  of  moving  a  plant  or  business 244 

124.  Names  of  natural  products 245 


Contents.  xl 

PACK. 

Section  125.  Geographic  names  which  indicate  a  process  of  manufacture.  .  .  .   247 

126.  Geographic  names  may  be  arbitrarily  adopted  as  trade  names.  .    252 

127.  Such  use  must  be  fair  and  truthful 254 

128.  Geographic  names  which  indicate  quality 256 

CHAPTER  X. 

Names  of  Articles  of  Merchandise. 

Section  129.  Acquired  or  secondary  meaning 261 

130.  Names  descriptive  of  construction  necessary  to  an  article 261 

131.  Unfamiliar  or  scientific  words  used  as  names  of  goods 263 

132.  Artificial  or  made-up  words 264 

133.  Use  of  identically  the  same  name,  by  competitors 265 

134.  Misuse  of  made-up  names  will  be  enjoined  whether  registered 

or  not 265 

135.  Names  appearing  to  the  eye  as  similar 267 

136.  Names  idem  sonans 269 

137.  Foreign  words  as  names  of  goods 274 

138.  Abbreviation  of  names  of  goods  —  Nicknames 275 

139.  Names  having  double  meaning 276 

140.  Numerals  and  letters  as  names  of  goods 278 

141.  Numerals  and  letters  used  to  designate  grade  of  goods 278 

142.  Numerals  indicating  source  or  origin 280 

143.  Initials  as  names  of  goods 281 

144.  Numerals  used  to  designate  series 282 

CHAPTER  XI. 
Simulation  of  Articles  Themselves. 

SECTION  145.  Copying  of  the  features  essential  to  construction 285 

146.  Copying  distinguishing  features  as  a  whole 286 

147.  Copying  whole  article  —  making  a  facsimile 287 

148.  Copying  a  single  feature  or  part 293 

149.  Making  repair  parts  for  articles  manufactured  by  others 294 

150.  Copying  articles  on  which  patents  have  expired 298 

151.  Copying  the  color  of  goods 303 

CHAPTER  XII. 

Dress  or  Get-up  of  Goods,  Including  Labels.  Wrappers, 
Bottles,  Cartons,  Etc. 

SECTION  152.  Labels  which  are  not  strictly  trade-marks  are  protected 306 

153.  Degree  of  similarity  calculated  to  deceive 307 

154.  Mere  "diversity  of  color  not  a  controlling  feature 308 

155.  Imitation  of  a  single  feature  such  as  color,  form,  etc 309 

156.  A  collocation  of  features  which  singly  might  be  copied  is  unfair.  311 


sli  Contents. 

PAGE. 

Section  157.  Resemblance  in  several   features  may  be  fair   if  these   features 

are  common  to  the  trade 313 

158.  Remarks  as  to  classification  of  the  following  cases  of  simula- 

tion in  dress  or  general  get-up 315 

159.  Designs,  devices  and  figures 315 

160.  Signatures   and    initials 317 

161.  Reading  matter   on   labels 318 

162.  Misleading  use  of  a  label  proper  in  itself 319 

163.  Tobacco  tags,  cigar  bands,  etc 320 

164.  Wrappers,  cartons,  etc 321 

165.  Copying  bottles  used  by  competitor 322 

166.  Refilling  containers  that  have  been  once  used 323 

167.  Substitution  and  selling  of  inferior  goods  in  dress  of  goods  of 

a  higher  grade 327 

168.  Get-up  of  wagons,  buildings,  etc 328 

169.  Labels 330 

170.  Labels  not  registered  or  copyrighted  are  protected 331 

171.  Features  of  an  action  as  to  label 331 

172.  Kinds   of    labels 332 

173.  Classification  of   label   cases 332. 

I.  Simulation   of    labels    in   which    a    name    is   the    principal 
feature. 
II.  Cases   involving  labels   in  which   the   salient   feature   is   a 
device  or  catch  word,  which  is  copied  or  simulated. 

III.  Cases  in  which  there  is  no  salient  feature  but   the  whole 

get-up  including  the  name  is  unfair. 

IV.  Cases  involving  a  general  resemblance  and  also  a  likeness 

in  the  name  used  in  which  relief  was  denied. 
V.  Cases  involving  no  similarity  in  name  but  a  resemblance 
in  general  appearance  amounting  to  unfair  competition. 
VI.  Cases  not  involving  names,  in  which  the  general  likeness 
in  get-up  is  not  close  enough  to  be  unfair. 


CHAPTER  XIII. 

Inteefekence  With  a  Competitor's  Contracts  and  Business 

Generally. 

Section  174.  Action  at  common  law  based  only  on  injury  to  one's  trade  or 

business 349 

175.  Malice 354 

176.  Interference  with  business  generally 358 

177.  Interference  with  contracts  by  third  person,  enjoined 360 

178.  Interference  with  contracts  with  servants 363 

179.  Lumley  v.  Gye  and  later  cases 364 

180.  Causing  breach  of  contracts  for  furnishing  information 366 

181.  Causing    breach    of    passengers'    contract    with    transportation 

companies 367 

182.  Summary 368 

183.  What  constitutes  interference  with  contract 369 


Contents.  xiii 

PAGE. 

Section   184.  Ignorance  of  the  existence  of  the  contract  is  no  defense  against 

an  injunction   373 

185.  Procuring  breach  of  contract  not  to  re-enter  business 374 

186.  Position  of  the  New  York  courts  on  this  rule 375 

187.  Conditional     contracts  —  Inducing     breach     of     manufacturer's 

contracts  with  retailers 377 

188.  Inducing  breach  of  contracts  for  sale  of  goods  made  by  secret 

process 379 

189.  What    interference    with    contractual    relations    in    general    is 

legitimate 384 

190.  Interference  with  a  competitor's  business  generally 385 

191.  Interference  with  salesman  of  a  competitor 385 

192.  Interference  by  false  representations  to  customers 386 

193.  Interference  by  bringing  a  multiplicity  of  suits 386 


CHAPTER  XIV. 

Libel  and  Slander  of  Business  Names  and  Reputation,  and 
of  Goods  ;  False  Representation,  Threat  of  Prosecution, 
Etc. 

Section  194.  English  procedure  statutes  as  related  to  injunction 389 

195.  Did  equity  have  jurisdiction  to  enjoin  libels  prior  to  the  Act 

of   1873? 391 

196.  Summary 303 

197.  Importance  of  this  question  in  the  United  States 395 

198.  Difference  between  trade  libel  and  personal  libel 395 

199.  American   cases 398 

200.  Case  of  Kidd  v.  Horry 401 

201.  Right  to  restrain  issuing  of  circulars  to  customers  —  Case  of 

Emack  v.  Kane 403 

202.  Theory  that  threats  of  prosecution  must  be  shown  to  warrant 

issuance  of  injunction '. 406 

203.  Intent  to  intimidate  customers,  not  to  fairly  warn  them,  is  a 

necessary  element  of  this  kind  of  a  proceeding  to  enjoin 408 

204.  Circulars  giving  notice  of  pendency  of  suit  for  unfair  compe- 

tion  are  legal 411 

205.  Trade  libels  not  libelous  per  se 411 

206.  Preliminary  injunction  should  issue,  when  the  plaintiff's  right 

is   so  clear   as   to  be   practically,   or   is   actually    (as  by   de- 
murrer)   conceded 414 

207.  Statutes  as  to  libels  do  not  oust  equity  of  jurisdiction 416 

CHAPTER  XV. 

Trade  Secrets  and  Confidential  Relations. 

Section  208.  Effect  of  publication  of  a  secret 420 

209.  Conditional  sale  of  goods  made  by  secret  formula? 421 

210.  Injunctions  against  breach  of  contract  by  disclosure  of  secrets.   422 


xiv  Contents. 

PAGE. 

Section  211.  Is  a  secret  a  monopoly? 424 

212.  Disclosure  of  a  secret  in  court 424 

213.  Discovery  <>f  a  secret  by  lawful  means 42.1 

214.  Violation  of  contract  of  employment  by  betrayal  of  secrets.  .  .  .  427 

215.  Employees    are    bound    l>y    implied    contract    not    to    disclose 

secrets 430 

210.  Title  to  secrets  discovered  by  employee  as  a  part  of  his  work.    432 

217.  Unlawful  secrets 43.3 

218.  Danger   of   injury  to   plaintiff   by  defendant's  disclosures  must 

exist  .  .  . 436 

219.  One  who  avails  himself  of  a  secret  fraudulently  disclosed  may 

be  enjoined  and  held  accountable  for  profits 436 

220.  Name  of  a  jobber  from  whom  goods  are  bought  may  be  a  trade 

secret 437 

221.  Transfer  of  secrets 437 

222.  List  of    customers    is    secret   property.      No    one   may   canvass 

them  except  the  owner  of  the  list 438 

223.  Letters  may  be  secrets 440 


CHAPTER  XVI. 

Remedies. 

Section  224.  Jurisdiction  of  courts  in  unfair  competition  eases 441 

225.  Parties  .     443 

226.  Injunctions  before  any  act  committed  —  Bills  in  nature  of  quia 

timet 445 

227.  Preliminary    injunctions . 446 

228.  Temporary  relief,  pending  trial 448 

229.  Important  and  basic  facts  will  not  be  decided  on  preliminary 

hearing 448 

230.  Injunctions  against   libel  and  slander  of  goods  and  names 450 

231.  Injunction  directing  use  of  explanatory   phrases 450 

232.  Final  relief  —  Scope  of  permanent  injunctions 451 

233.  The  court  does  not  pass  upon  measures  adopted  by  the  defend- 

ant to  correct  his  unfair  acts 452 

234.  Decree  correcting  a  confusing  use  of  names  and  signs 453 

235.  Injunctions  against  use  of  colors,  size,  form,  etc 453 

236.  Injunctions  against  use  of  family  names,  scope  of 454 

237.  Injunction  against  the  use  of   the   name  of  an  ex-partner  or 

former  member  of  a  corporation,  or  owner  of  a  patent 456 

238.  Damages  and   accounting  for   profits 457 

239.  Election  of  remedy  by  plaintiff 458 

240.  Damage  to  reputation  of  product  to  be  reckoned  as  well  as  loss 

of  profits 458 

241.  Exemplary  damages 459 

242.  Deduction  of  defendant's  expenses  from  profits 460 

243.  Destruction  and  delivery  up   of  offending  articles 462 

244.  Accounting  refused  where  injunction  is  denied 462 

245.  Contempt  of  court  by  failure  to  obey  injunction 462 


Contents.  xv 

CHAPTER  XVII. 

Defenses.  pAQE 

Section  246.  The  defense  that  the  plaintiff  and  defendant  are  not  in  compe- 
tition with  each  other 464 

247.  The  defense  that  the  name,  mark,   form,  shape  or  other  device 

in  question  has  not  been  exclusively  used  by  the  complainant 
but  is  in  common  use 465 

248.  The  defense  that  the  defendant's  article  is  as  good  as  the  plain- 

tiff's      406 

249.  The  defense  that  the  defendant   has  no  intent  to  pass  off  his 

goods  as  plaintiff's  goods 468 

250.  The  defense  that  the  goods  were  not  marked  with  any  spurious 

marks   or   names 468 

251.  The    defense    that    defendant's    marks    differ    sufficiently    from 

complainant's  to  be  capable  of  registration  as  distinct  marks.    468 

252.  The   defense  that  representations  objected  to   by  the   plaintiff 

are  true   469 

253.  The  defense  that  the  deception  is  due  not  to  the  defendant  but 

to  a  jobber  or  retailer,  or  other  purchaser,  from  the  defendant.  470 

254.  The  defense  that  defendant  was  only  the  maker  of  tiie  label  or 

container  complained  of  and  was  not  responsible  for  its  ulti- 
mate use  by  him  for  whom  it  was  made  473 

255.  The  defense  that  defendant  was  acting  only  as  agent  for  another 

and  received  none  of  the  profits    473 

256.  The  defense  that   complainant's   title   was   not   properly  estab- 

lished      474 

257.  The  defense   that   the  offense   is   too   trivial   for   the   court  to 

notice 474 

258.  The  defense  that  plaintiff's  goods  are  worthless  or  useless.  .  .  .    475 

259.  The  defense  that  defendant's  name  is  two  or  more  words,  while 

plaintiff's  is  one,  and  hence  different 475 

260.  The  defense  that  plaintiff  has  acted  unfairly  toward  third  per- 

sons not  connected  with  the  suit  at  bar ' 475 

261.  The   defense   that   plaintiff    is   an   impostor   and   deluding   the 

public 476 

262.  The  defense  that  plaintiff  is  making  misrepresentations  in  his 

own  business   476 

263.  Misrepresentation  usually  but  not  always  an  affirmative  defense.  478 

264.  The  misrepresentation  must  be  as  to  the  subject-matter  of  the 

suit 478 

265.  Misrepresentations  discontinued  before  suit  is  brought   479 

266.  Misrepresentations  must  be  intentional  and  material   480 

267.  Misrepresentations  as  to  ingredients  and  the  nature  and  effect 

of  a  medical  preparation 4S1 

268.  Misrepresentations  must  be  as  to  ingredients  that  are  essential.  486 

269.  Extravagant  claims  as  to  efficacy  of  medicines 487 

270.  Misrepresentations   as   to   manufacture,    place   of   manufacture, 

or  origin  of  goods   487 

271.  Misrepresentation  as  to  maker  of  goods   490 


xvi  Contents. 

PAGE. 

Section  272.  Continuing  use  of  name  of  predecessor 491 

273.  Misrepresentation  as  to  unessential  details 492 

274.  .Misrepresentations  implying  claim  of  monopoly  —  Use  of  term 

"  Patented  " 494 

275.  Misrepresentation  by  use  of  term  "Copyrighted"  or  "Regis- 

tered " 496 

276.  Misrepresentation    by    laudatory    expressions    and   exaggerated 

trade  phrases    498 

277.  Miscellaneous  cases  of  misrepresentation  deemed  harmless   ....  502 

278.  Claiming  falsely  to  be  a  corporation 592 

279.  Use  of  term  "  Established  in  "   503 

2S0.  Abandonment 503 

281.  Kinds  of  laches  505 

282.  Laches  in  the  sense  of  mere  delay   506 

283.  First  user  of  mark  may  revoke  license  implied  from  laches.  .  .  .   508 

284.  No  presumption  of  acquiescence  arises  from  an  exclusive  right.  509 

285.  Material  delay  bars  right  to  an  accounting  of  profits 510 

286.  Laches   may   bar   right   to    order    for  destruction   of   offending 

goods 511 

287.  Laches  which  bars  right  to  preliminary  injunction 511 

288.  Acquiescence,  in  the  sense  of  inaction  upon  which  others  have  a 

right  to  reply   512 

290.  Test  by  which  to  determine  acquiescence  514 


TABLE    OF   CASES. 


A-  PAGET. 

Accident  Ins.  Co.,  The,  Ltd.  v.  The  Accident,  Disease  and  General  Ins.  Corp., 

Ltd.,  51  L.  T.  Rep.  N.  S.  597-1884 215 

Actiengesellschaft,  V.  U.  F.  v.  Amberg,  109  Fed.  151-1901   (C.  C.  A.  3d  Cir)  .  .    504 

Adams,  Matter  of,  24  Misc.   (N.  Y.)   293-1898;  53  N.  Y.  Supp.  606 108 

Addington  v.  Cnllinane,  28  Mo.  App.  238-1887 460 

Adrianee,  Piatt  &  Co.  v.  National  Harrow  Co.,  121  Fed.  827-30-1903    (C.  C. 

A.  2d  Cir.),  5S  C.  C.  A.  103,  49  L.  R.  A.  755 409,  410,  415 

Aiello  v.  Montecalfo,  21  R.  I.  496-1899 223 

Ainsworth  v.  Walmsley,  L.  R.  1  Eq.  518-1866 45,     98 

Alaska  Packers'  Assn.  v.  Alaska  Improvement  Co.,  60  Fed.  103-1904   (C.  C. 

N.  D.  Cal.) 247,  488 

Albright  v.  Teas,  37  N.  J.  Eq.  171 432 

Alden  v.  Gross,  25  Mo.  App.   123-1887 482 

Alexander  Bros.  v.  Morse,  14  R.  I.  153-1884 269 

Alff  &   Co.   v.   Radam,   77   Tex.   530-1890,    14   S.   W.    164,   9   L.   R.   A.    145n. 

See  also  81  Tex.  122-1891,  16  S.  W.  990 29 

Alger  v.  Thatcher,   19  Pick.  51 432 

Allegretti  v.  Allegretti   Chocolate   Cream   Co.,    177   111.    129-1898,   52   N.   E. 

487 58,  99,  220 

Allegretti  Choc.  Cream  Co.  v.  Keller.  85  Fed.  643-1808  (C.  C.  S.  D.  X.  Y.).448,  450 

Allegretti  Chocolate  Cream  Co.  v.  Rubel,  83  111.  App.  558-1898 403,  406. 

Allen  v.  Flood,  App.  Cas.  1-1898 350,  352,  353,  354,  355,  357,  362,  376,  379' 

American  Brewing  Co.  v.  St.  Louis  Brewing  Co.,  47  Mo.  App.  14-1891 469 

American  Cereal   Co.  v.  Eli  Pettijohn  Cereal   Co.,  72   Fed.  903-1896    (C.  C. 

111. )  ;    affirmed   76   Fed.   372 14S 

American  Clay  Mfg.  Co.  of  Pa.  v.  American  Clay  Mfg.  Co.  cf  N.  J.,  198  Pa. 

St.  189-1901,  47  Atl.  936 44,  200 

American   Grocer   Publishing   Assn.   v.   The   Grocer  Publishing   Co.,   25   Hun 

(N.  Y.)    398-1881 189,  272 

American  Law  Book  Co.   v.  The  Edward   Thompson  Co.,  41   Misc.    (N.   Y.) 

396-1903,  84  N.  Y.  Supp.  225 359,  375 

American   Order   of   Scottish   Clans   v.   Merrill,    151   Mass.    55S,   8   L.   R.   A. 

320-1890,  24  N.  E.  918 206 

American  Solid  Leather  Button  Co.  v.  Anthony,   15   R.  I.   33S-1886,  5  Atl. 

626 279 

American   Tin    Plate    Co.    v.    Licking    Roller    Mill    Co.,    158    Fed.    690--1902 

(C.   C.  Ky.) 281 

American  Waltham  Watch  Co.  v.  United  States  Watch  Co.,   173  Mass.  85- 

1899,  53  N".  E.  141,  43  L.  R.  A.  826 56,  227 

American  Washboard  Co.  v.  Saginaw  Mfg.  Co.,  103  Fed.  281-1900   (C.  C.  A. 

6th  Cir.),  50  L.  R.  A.  609 21,  33,  34,     35 

[xvii] 


xviii  Table  of  Cases. 

PAGE. 

American  Wine  Co.  v.  Kohlman.  158  Fed.  830-1007    (C.  C.  Ala.) 206 

Amoskeag  Mfg.  Co.  v.  Garner,  54  How.  Pr.    (X.  Y.)   207-1870 255,  509 

Amoskeag  Mfg.  Co.  v.  Spear,  2  Sandf.   (N.  Y.)   500-1840 14.  307,  507 

Angier  v.  Webber,  14  Alien   (Mass.)   211-1807.  92  Am.  Dec.  748 105,   111 

Angle  v.  Chicago,  etc.,  Railway.  151  U.  S.  1-1893 352,  362,  304 

Angle  v.   Chicago,   St.   Paul,   etc.,   Ry.   Co.,   151   U.   S.   1-1894,   38  L.  ed.   55, 

14  Sup.  Ct.  240 360,  368,  372 

Anglo-Swiss  Milk  Co.  v.  Metcalf,  3  R.  P.  C.  28 270 

Anheuser-Busch  Brew.  Assn.  v.  Clarke,  20  Fed.  410-1880  (C.  C.  Md.) 335 

Anheuser-Busch   Brewing   Assn.   v.    Fred    Miller   Brewing   Co.,    87    Fed.    804 

(Cir.  Ct.  E.  D.  Wis.  1S0S ) 248 

Anheuser-Busch  Brewing  Assn.  v.  Piza,  24   Fed.    140-51-1885 243 

Anonyme  v.  Western  Distilling  Co.,  40  Fed.  921-1801    (C.  C.  E.  D.  Mo.) 401 

Apolfinaris  Co.,  Ltd.  v.  Scherer,  27  Fed.  18-1880   (C.  C.  S.  D.  X.  Y.) 75,  380 

Armington  &  Sims  v.  Palmer,  21  R.  I.  100-1808.  42  Atl.  308,  43  L.  R.  A.  95.    107 

Armstrong  v.  Kleinhans,  82  Ky.  303-1S84,  50  Am.  Rep.  894 232 

Armstrong  v.  Savannah  Soap  Works,  53  Fed.  124-1892    (C.  C.  Ga.) 443 

Army  and  Navy  Co-operative  Society  v.  Army,  Navy  and  Civil  Service  Co- 

.      operative  Society  of  South  Africa.  Ltd.,  19  R.  P.  C.  574-70-1902 84 

Arthur  v.  Oakes,  03  Fed.  301,  128  Fed.  957-1904   (C.  C.  Del.) 407 

Ashley  v.  Dixon,  48  N.  Y.  430-1872 350,  375 

Avery  &  Sons  v.  Meikle  &  Co.,  81  Ky.  75-84-1SS3 30,  282,  295 

Ayer  v.  Hall,  3  Brewst.   (Pa.)   509-1871 99 

B. 

Baglin,  A.  L.  v.  The  Cusenier  Co.,  164  Fed.  25   (C.  C.  A.,  1908) 425 

Baglin  v.  Cusenier  Co.,  141  Fed.  407-1905   (C.  C.  A.  2d  Cir.) 449 

Bailey  v.  Walford,  0  Q.  B.  197-1846,  Q.  B.  730-1800 400 

Baker,  Walter,  &  Co.  v.  Baker,  77  Fed.  181-1890 132 

Baker,  Walter,  &  Co.  v.  Baker,  87  Fed.  209-1898 133,  451 

Baker  v.  Baker,   115  Fed.  297-1902    (C.  C.  A.  2d  Cir.) 133 

Baker,  Walter,  &  Co.  v.  Sanders,   SO  Fed.   SS9-1S97    (2d  Cir.),  20  C.  C.  A. 

220 132,  474 

Baker  v.  Sanders,  97  Fed.  948-1890   ( C.  C.  E.  D.  Pa.) 133,  447 

Baker,  Walter,  &  Co.  v.  Slack,  130  Fed.  514-1904   (C.  C.  A.  7th  Cir.) 09,  134 

232,  459,  460 

Ball  v.  Best,  135  Fed.  434-1905   (C.  C.  N.  D.  111.) 39,  SO,   140,  160,  225 

Ball  v.  Siegel,  110  111.  137-1880,  4  N.  E.  067 58,  318 

Ball  v.   Broadway  Bazaar,  App.  Div.    (2d  Dept.)    N.  Y.  Law  Jour.,  Oct.  29, 

1907 233 

Baltimore  Car  Wheel  Co.  v.  Bemis,  20  Fed.  05-1SS0   (C.  C.  Mass.) 413 

Baltimore  Life  Insurance  Co.  v.  Gleisner,  202  Pa.  St.  3S6-88-1902,  51  Atl. 

1024 415 

Bank  of  Tomah  v.  Warren.  94  Wis.  151-1896,  68  X.  W.  549 89,   108 

Banks  v.  Gibson,  34  Beav.  566-1865 116 

Barber  v.  Manico,  10  R.  P.  C.  93-1893 149 

Barker's  Trade-Mark,  Re,  53  L.  T.  X.  S.  24 276 

Barnes  v.  Pierce,  104  Fed.  213-1908    (C.  C.  X.  Y.) 327 

Barnett  v.  Leuchars,  34  L.  T.  (Ch.)   X.  S.  495-1805 327,  462 

Bates  Mfg.  Co.  v.  The  Bates  Machine  Co.,  141  Fed.  213-1905 318 

Batty  v.  Hill,  1  Hem.  &  M.  264  1863 36 


Table  of  Cases.  .  xix 

PAGE. 

Bauer,  A.,   &   Co.   v.  Order  of   Carthusian  Monks,   120  Fed.   78,  56   C.   C.  A. 

480-1903 272,  323 

Bauzhaf  v.  Chase,  150  Cal.  180-1907 292 

Bayer  v.  Baird,  15  B.  P.  C.  G15 281 

Beard  v.  Turner,   13  L.   T.  N.   S.   747-18G6 75,  512 

Beattie  v.  Callanan,  82  App.  Div.   (X.  V.)    7-1903,  SI  X.  V.  Supp.  413 359 

Beddow  v.  Beddow,  L.  B.  9  Oh.  Div.  S9-1S7S 403 

Beecham  v.  Jacobs,  159  Fed.  129-1908    (C.  C.  A.  2d  Cir.) 494 

Beekman  v.  Marsters,  195  Mass.  205-1907,  80  N.  E.  S17,  11  L.  R.  A.  N.  S. 

201 361,  372 

Bell  v.  Locke,  S  Paige   (X.  Y.)   75-1840 190,  192 

Bender  v.  Enterprise  Mfg.  Co.,  15G  Fed.  641-1907    (C.  C.  A.  6th  Cir.) 294 

Benton  v.  Pratt,  2  Wend.  3S5-1829 352,  362,  370.  371 

Bergamini  v.  Bastian,  35  La.  Ann.  60-1883 Ill 

Berry  v.  Donovan,  188  Mass.  353-1905,  74  X.  E.  603,  5  L.  R.  A.  X.  S.  899..  371 

Bewlay  &  Co.,  Ltd.  v.  Hughes,  15  R.  P.  C.  290-1898 240 

Bickmore  Gall  Cure  Co.  v.  Karns,  134  Fed.  S33-1905,  67  C.  C.  A.  439 67,  339 

Bile  Bean  Mfg.  Co.  v.  Davidson,  22  R.  P.  C.  553-1905   (Ct.  Sess.) 481 

Bingham  School  v.  Cray,  122  X.  C.  699-1898,  41  L.  R.  A.  243.  30  S.  E.  304.  .  160 
Birmingham  Small  Arms  Co.,  Ltd.  v.  Webb  &  Co.,  24  R.  P.  C.  27-1906   (Ch. 

Div. ) 278 

Birmingham  Vinegar   Brewery   Co.   v.  Powell,   66   L.   J.    Ch.  X.   S.   7G3-1S97, 

(1S97)   A.  C.  710   55,  250 

Bissell    Chilled   Plow   Works   v.   T.    M.    Bissell   Plow   Co.,    121    Fed.   357-1902 

(C.  C.  Mich.) 510,  511 

Bitterman  v.  Louisville  &  Nashville  R.  R.  Co.,  207  U.  S.  205-1907.  .359,  362, 

367,  36S 

Bixby  v.  Dunlap,  56  XT.  H.  456-1876,  22  Am.  Rep.  475 352,  363 

Black  v.  Ehrich,  44  Fed.  793-1S91    (C.  C.  S.  D.  X.  Y.) 195 

Blackwell  v.  Crabb,  36  L.  J.  Ch.  X.  S.  504-1867 78 

Blackwell  &  Co.  v.  Dibrell  &  Co.,  3  Hughes  151-1878   (U.  S.  C.  C.  Va.)  .  .241,  505 

Blackwell  v.  Wright,  73  X.  C.  310-1875 50 

Blackwell's  Durham  Tobacco  Co.  v.  American  Tobacco  Co.    (X.  C),  59  S.  E. 

123-1907 201 

Blakely  v.  Sousa,  197  Pa.  St.  305-1900,  47  Atl.  286 , 95 

Blanchard  v.  Hill,  2  Atk.  484-1742 11 

Block  v.   Standard  Distilling  &   Distributing   Co.,   95   Fed.   978-1899    (C.   C. 

Ohio ) 503 

Blofield  v.  Payne,  4  B.  &  Ad.  410-1833 13,  14,  467 

Blumenthal  v.  Bigbie,  30  App.  Cas.    ( D.  C.)    118-1908 182 

Board  of  Trade,  etc.  v.   Christie  Grain  &  Stock  Co.,   198  U.  S.  236-1904,  49 

L.  ed.  1031,  25  Sup.  Ct.  637 367,  421 

Board  of  Trade  v.  Hadden-Krull  Co.,  109  Fed.  705-1901    (C.  C.  Wis.) 366 

Board  of  Trade  v.  >C.  B.  Thomson  Commission  Co.,  103  Fed.  902-1900   (C.  C. 

Wis.) 366 

Bobbs-Merrill   Co.    v.  Straus,    147   Fed.    15-1906.   210   U.    S.   339-1907    (C.   C. 

A.   2d  Cir. ) 373,  380-383 

Bohn  Mfg.  Co.  v.  Hollis,  54  Minn.  223-1892.  55  N.  Y.  119.  21  L.  R.  A..  .  .337-385 

Bolander  v.  Peterson,  136  111.  215-1891.  26  X.  E.  603,  11  L.  R.  A.  350..  ..85,  499 

Bormard  v.  Perryman,  3  Ch.  269-1 891 390 

Booth,  Alfred  W.,  &  Bro.  v.  Burgess   (X.  J.  Eq.  1906) ,  65  Atl.  226 359 


xx  Table  of  Cases. 

PAGE. 

Booth,  A.,  &  Co.  v.  Davis,  127  Fed.  875-1904  (C.  C.  Mich.) 373 

Booth  v.  Jarrett,  52  How.  Pr.  169-1876   (X.  Y.  C.  P.  Sp.  T.) 103 

Borthwick  v.  Evening  Post,  37  C'h.  Div.  449-1888,  12  Encyc.  of  the  Laws  of 

England  234,  235 23.   191 

Boston  Diatite  Co.  v.  Florence  Manufacturing  Co.,  114  Mass.  69-1873.  .  .  .399,  400 
Bourlier  Brothers  v.  Macauley,  91   Ky.   135-1891,   15  S.  W.  60,   11   L.   R.  A. 

550 359,  306 

Bowen  v.  Hall,  L.  R.  6  Q.  B.  Div.  333-1881 362.  365 

Boynton  v.  Shaw  Stocking  Co.,  146  Mass.  219-1888,  15  X.  E.  507 412 

Boysen  v.  Thorn,  98  Cal.  578-1893,  33  Pac.  492,  21  L.  R.  A.  233 359,  364,  365 

Bowen  v.  Hall,  L.  Pv.  6  Q.  B.  Div.  333-1881 359,  375 

Bradley  v.  Morton,  33  Conn.   157 444 

Braham  v.  Beachim,  7  Oh.  Div.  848-1878 233,  234 

Braham  v.  Bustard,   1   Hem.  &  M.  447-1863 177 

Brandreth  v.  Lance,  >8  Paige    (N.   Y.)    24-1839:    Eden   Injunction    (3d   ed.) 

372 39S.  413 

Breitenbach,   M.   J.,   Co.    v.   Spangenberg,    131    Fed.    160-1904    (C.    C.   S.   D. 

X.  Y. )     263 

Brooke  &  Co.  v.  Commissioners  of  Inland  Revenue,  2  Q.  B.  356-1896 89 

Brooklyn  White  Lead  Co.  v.  Masury,  25  Barb.    (N.  Y.)   416-1857 87,  253 

Brown  v.  Mercer,  37  N.  Y.  Super.  Ct/265-1874 471 

Brown  v.  Seidel,  153  Pa.  St.  60-72-1893,  25  Atl.   1064 82 

Brown  Chemical   Co.  v.  Frederick   Stearns  &  Co.,   37    Fed.   360-1889    (C.   C. 

E.   D.   Mich.) 88 

Brown  Chemical   Co.  v.  Meyer,   139   U.  S.  540-1890,  35   L.  ed.   247,   11   Sup. 

Ot.  625 108,   127,   149,  162 

Brown,  J.  S.,  Hardward  Co.  v.  Ind.  Stove  Works,  96  Tex.  453-1903,  73  S.  W. 

800 364 

Buckland  v.  Rice,  40  Ohio  St.  526-1884  ..'.■ 490 

Buck's  Stove  and  Range  Co.  v.  Kiechle,  76  Fed.  758-1896    (Cir.  Ct.  Ind.)  ...  293 

Burgess  v.  Burgess,  3  De  G.  M.  &  G.  896-1853 127,   128,   130,  176 

Burke,  Edward  &  John,  Ltd.  v.  Bishop.  144  Fed.  838-1900   (C.  C.  A.  2d  Cir.).  512 

Burnett  v.  Chetwood,  2  Merivale  441-1720,  note 391 

Burnett  v.  Phalon,  3  Keyes   (X.  Y.)    594-1867 273 

Burns,   C.    O.,   Co.   v.   Burns,   W.   F.,   Co.,    118    Fed.   944-1902    (C.   C.   S.   D. 

X.  Y.)    448,  512 

Burrow   v.   Marceau,    124    App.   Div.    (X.    Y.)    665-1908,    109    X.    Y.    Supp. 

105 152,  210,  444 

Burton  v.  Stratton,  12  Fed.  696-1S82 100 

Bury  v.  Bedford,  4  De  G.  J.  &  S.  352-1 864 102 

Busch  v.  Gross,  71  N.  J.  Eq.  508,  64  Atl.  754-1906 180 

Butler  v.  Freeman.  1  Ambl.  301-1756 38 

Butler  v.  The  Mayor  of  Thomasville.  74  Ga.  570-1 SS5 40 

Buzby  v.  Davis,  150  Fed.  275-1906  (€.  C.  A.  8th  Cir.) 171 

C. 
Cady  v.  Schultz,  19  R.  I.  193-1895.  32  Atl.  915,  29  L.  R.  A.  524.... 81,   165,   185 

Cahn  v.  Gottschalk,  14  Daly  (X.  Y.)   542-1888,  2  X.  Y.  Supp.  13 270,  487 

496,  510 

California  Fig  Syrup  Co.  v.  Improved  Fig  Syrup  Co.,  51    Fed.  296 444 

California  Fig  Syrup  Co.  v.  Putnam,  66  Fed.  750-1895   (C.  C.  Mass.) 482 


Table  of  Cases.  xxi 

PAGE. 

California  Fig  Syrup  Co.  v.  Stearns  &  Co.,  73  Fed.  812-1896   (C.  C.  A.  6th 

Cir.) ,  33  L.  R.  A.  50 482 

California  Fruit  Canners'  Assn.  v.  Myer,  104  Fed.  S2   (Cir.  Ct.  Md.  1899)  ..  230 

Campbell  v.  Cooper,  34  N.  H.  49 306 

Canal  Co.  v.  Clark,  15  Wall.  311-1871,  80  U.  S.  311,  20  L.  ed.  5S1.  .  .34,  244,  469 

Candee,  Swan  &  Co.  v.  Deere  &  Co.,  54  111.  439-G1-1S70 296 

Cantrell  &  Cochrane  v.  Wittemann,  109  Fed.  S2-1901    (C.  C.  S.  D.  N.  Y.)  .. 

446,  448 

Carmel  Wine  Co.  v.  Palestine  Hebrew  Wine  Co.,  161  Fed.  654-1908 449 

Carrington  v.  Taylor,  11  East  571 350 

Cartier  v.  Carlile,  31   Beav.  292-1862 46,  55 

Casey  v.  Cincinnati  Typographical  Union,  45  Fed.  135-1891   (C.  C.  Ohio),  12 

L.  R.  A.  193,  note 406 

Cash  v.  Cash,  19  R.  P.  C.   181-1902,  86  L.  T.  211 139,  142,  451,  454 

Cash,  J.  &  J.,  Ltd.  v.  Cash,  84  L.  T.  Ch.  N.  S.  352-1901 454 

Castroville  Co-op.  Creamery  Co.  v.  Coe,  92  Pac.  648   (Cal.) 476 

Caswell  v.  Hazard,  121  X.  Y.  484-1890,  24  N.  E.  707 148 

Cellular  Clothing  Co.,  Ltd.  v.  Maxton  &  Murray,  App.  Cas.  326-1899 48,  166 

Celluloid  Mfg.   Co.   v.   Cellonite  Mfg.  Co.,  32    Fed.   94-1SS7    (C.   C.  N.  Y.) 

98,    108,    198 217,  273 

Centaur  Co.  v.  Heinsfurter,  84  Fed.  955 303 

Centaur  Co.  v.  Killenberger,  S7  Fed.  725-1898   (C.  C.  N.  J.) 299,  321 

Centaur  Co.  v.  Link,  62  N.  J.  Eq.  147-1901,  49  Atl.  828 301,  338 

Centaur  Co.  v.  Marshall,  97  Fed.  785-1899,  38  C.  C.  A.  413 62,  447 

Central  Transportation  Co.  v.  Pullman  Palace  Car  Co.,  139  U.  S.  24-53-1890, 

35  L.  ed.  55,  11  Sup.  Ct.  47S 424 

Chadron  Opera  House  Co.  v.  Loomer,  71  Neb.  7S5,  99  N.  W.  649-1904 181 

Chadwick  v.  Covell,  151   Mass.   190,  23  N.  E.   1008,  6  L.  R.  A.  839,  21   Am. 

St.  Rep.  442 123,  422,  427 

Chambers  &  Marshall  v.  Baldwin,  91   Ky.   121-1891,   15   S.  W.  57,   11  L.  R. 

A.  545    359,  360,  376 

Chancellor,    etc.,   University   of    Oxford   v.    Y\  ilmore-Andrews   Pub.    Co.,    101 

Fed.  443-1900  (C.  Ct.  S.  D.  X.  Y.) 251 

Chappell  v.  Stewart,  37  L.  R.  A.  787-1896 38 

Chasemore  v.  Richards,  7  H.  L.  C.  340-1859 355 

Cheavin  v.  Walker,  5  Ch.  Div.  S50-1877    ( Ch.  App.) 495 

Chesterman  v.  Seeley,  18  Pa.  Co.  Ct.  631-1890,  5  Pa.  Dist.  757 108 

Chickering  v.  Chickering  &,  Sons,  120  Fed.  69-1903   (C.  C.  A.) 159,  400 

Chipley  v.  Atkinson,  23  Fla.  206-1887,  1  So.  934 363,  364,  376 

Chisisum  v.  Dewes,  5  Russ.  29 89 

Chittenden  v.  Witbeck,  50  Mich.  401-20^1883,   15  X.  W.  526 92 

Choynski  v.  Cohen,  39   Cal.  501-1870 85 

Church  &  Dwight  Co.  v.  Russ,  99  Fed.  276-78-1900   (C.  C.  Ind.) 11 

Church  v.  Kresner,  26  App.  Div.   (X.  Y.)   349-1 S98,  49  X.  Y.  Supp.  742 148 

Churton  v.  Douglas,  28  L.  J.  X.  S.  Ch.  841-1859 92,  111 

Cincinnati  U.  S.  Co.  v.  Cincinnati   Shoe  Co,  7  Ohio  X.  P.   135 451 

City  of  Carlsbad  v.  Kutnow,  71  Fed.  167-1895    (C.  C.  A.  2d  Cir.),  35  U.  S. 

App.  750,  IS  C.  C.  A.  24   11,  235 

City  of  Carlsbad  v.  Kutnow,  OS  Fed.  794-1895,  affirmed  35  U.  S.  App.  750- 

1S95,  71   Fed.   167 238 

City  of  Carlsbad  v.  Tibbetts,  51  Fed.  852-56 229 


xxii  Table  of  Cases. 

PAGE. 

Civil  Service  Supply  Association  v.  Dean,  13  €h.  Div.  512-1879 83 

Clark  v.  Aetna  Iron  Works,  44  111.  App.  510-1892 217 

Clark  v.  Clark,  25  Barb.   (N.  Y.)   70-1857 333,  450 

Clark  v.  Freeman,   11  Beav.   112-1848 391,  398 

Clark  Thread  Co.  v.  Armitage,  67  Fed.  896-1895  (C.  C.  S.  D.  N.  Y.),  affirmed 

and  modified  74  Fed.  896 154,  174,  499,  503 

Clark  Thread  Co.  v.  Armitage,  74  Fed.  936-1896   (C.  C.  A.  2d  Cir.) 493 

Clay  v.  Kline,  149  Fed.  912-1906   (C.  C.  S.  D.  N.  Y.) 321 

Clayton  v.  Day,  26  Sol.  Jour.  43-1881 176 

Clement  v.  Maddick,  5  Jur.  N.  S.  592-1859 190,  272 

Cleveland  Foundry  Co.  v.  Silver,  134  Fed.  591 308 

Cleveland  Stone  Co.  v.  Wallace,  52  Fed.  431-1892    (C.  C.  Mich.) 499 

Clotworthy  v.  Schepp,  42  Fed.  62-1890  (C.  C.  S.  D.  N.  Y.) 483,  484 

Coal  Co.  v.  Spangler,  54  N.  J.  Eq.  354,  34  Atl.  932 114 

Coats  v.  Holbrook,  2  Sandf.  Ch.  586-1845 246,  326 

Coats,  J.  &  P.,  'Ltd.  v.  John  Coates  Thread  Co.,  135  Fed.  177-79-1905 212 

Coats  v.  Merrick  Thread  Co.,  149  U.  S.  562-1892,  at  p.  566,  37  L.  ed.  847, 

13  Sup.  Ct.  966 25,  255,  315 

Cochrane  v.  MacNish  &  Son,  App.  Cas.  225-1896 177,  266,  496 

Coeur  D'Alene  Mining  Co.  v.  Miners'  Union,  51  Fed.  744 407 

Coffeen  v.   Brunton,   5  McLean,  256-1851,   Fed.   Cas.  No.   2947,   4  McLean, 

516-1849,  Fed.  Cas.  No.  2946 50,  342 

Cohen  v.  Nagle,  190  Mass.  4-1906,  76  N.  E.  276,  2  L.  R.  A.  964,  190  Mass. 

4-1893,  76  N.  E.  276 171,  451 

Cole,  G.  W.,  Co.  v.  American  Cement  Co.,  130  Fed.  703-1904   (C.  C.  A.  7th 

Cir.)    3,  10,     33 

Colgate  v.  Adams,  88  Fed.  899-1898   ( C.  C.  N.  D.  111.) 255 

Collard  v.  Marshall,   1   Ch.  571-1892,  577 393 

Collins  Company  v.  Oliver  Ames  &  Sons  Corporation,  18  Fed.  561-1882   (C. 

C.  S.  D.  N.  Y.) 25,  175 

Colman  v.  Crump,  70  N.  Y.  573-1877 47,  73,  315 

Colton   v.   Thomas,   2   Brewst.    (Pa.)    308-1869,   7   Phila.   257    (Com.   Pleas, 

Phila.) 182,  185 

Columbia  Mill  Co.  v.  Alcorn,   150  U.  S.  460-1893,  37   L.  ed.   1144,   14  Sup. 

Ct.  141 208 

Commercial    Acetylene    Co.    v.    Avery    Portable    L.    Co.,    152    Fed.    642-1906 

(C.  C.  Wis.)    387,  406 

Commercial  Advertiser  Assn.  v.  Haynes,  26  App.  Div.    (N.  Y.)   279-1898,  49 

N.  Y.  Supp.  938 190,  273 

Commissioners  of  Inland  Revenue  v.  Angus  &  Co.,  23  Q.  B.  D.  579-1889 89 

Commonwealth  v.  Banks,  198  Pa.  St.  397-1901,  48  Atl.  277 87 

Compania  General  de  Tabacos  v.  Eehder,  5  R.  P.  C.  61-1887   (Ch.  Div.) 239 

Computing  Scale  Co.  v.  Standard  Computing  Scale  Co.,   118  Fed.  965-1902, 

55  C.  C.  A.  459 272 

Condy  &  Mitchell  v.  Taylor  &  Co..  56  L.  T.  Rep.  891-1887  (Ch.  Div.) 324 

Congress  and   Empire    Spring   Co.   v.    High   Rock   Congress   Spring    Co.,   45 

N.  Y.  291-1871 246 

Connell  v.  Reed,  123  Mass.  477-1880 482,  489 

Conrad  v.  Uhrig  Brewing  Co.,  8  Mo.  App.  277-1880 334,  486 

Consolidated  Ice  Co.  v.  Hygeia  Distilled  Water  Co.,  151  Fed.  10-1907    (C.  C. 

A.    3d    Cir.) 457 


Table  of  Cases.  xxiii 

pagf. 

Continental  Ins.  Co.  v.  Continental  Fire  Assn.,  41  C  C.  A.  326,  101  Fed.  255.  259 
Continental  Tobacco  Co.  v.  Larus  &  Brothers  Co.,  133  Fed.  727-1904   (C.  C. 

A.  4th  Cir.) 345 

Cook  v.  Collingridge,  Jacob  607-1825 Ill 

Cook  &  Bernheimer  Co.  v.  Ross,  73  Fed.  203-1896   (C.  C.  S.  D.  N.  Y.)  .  .  .  .309,  322 

Cooke  &  Cobb  Co.  v.  Miller,   169  N.  Y.  475-1902,  62  N.  E.  582 296 

Cooper  &  McLeod  v.  Maclachlan,  19  R.  P.  C.  27-1901 84 

Corliss  v.  Walker,  64  Fed.  280-1894,  31  L.  R.  A.  283 38 

Cornwall,  Re,  12  Pat.  Off.  Gaz.  312-1877 255 

Cottrell    v.    Babcock    Printing   Press   Mfg.    Co.,   54   Conn.    122,    6    Atl.    791- 

1886 110,  111 

Coulson  &  Sons  v.  Coulson  &  Co.,  3  Times  L.  R.  846-1S87  415 

County  Chemical  Co.  v.  Frankenburg,  21  R.  P.  C.  722-1904 344,  462,  571 

Covell  v.  Chadwick,  153  Mass.  263-1891,  26  N.  E.  856 438 

Cra\vshay  v.  Collins,  15  Ves.  218-1808 119 

Crawshay  v.  Thompson,  4  Man.  &  Gr.  357-1842 14,  15 

Crescent  Typewriter  Supply  Co.,  Re,  30  App.  Cas.  (D.  C.)   324-1908. 259 

Croft  v.  Day,  7  Beav.  84-1843 14,  16,  126,  150,  176,  183,  187 

Croft  v.  Richardson,  59  How.  Pr.  356-1880 401 

Cropper  v.  Cropper,  23  R.  P.  C.  3S8-1906 443 

Crossman  v.  Griggs,  186  Mass.  275-1904,  71  N.  E.  560 102 

Crowder  v.  Tinkler,  19  Ves.  Jr.  617-1816 40 

Cruttwell  v.  Lye,  17  Ves.  335-1810 89,  91,  111 

Cuervo  v.  Landauer,  63  Fed.  1003-1894   (C.  C.  S.  D.  N.  Y.) 60 

Cutter  v.  Gudebrod  Bros.  Co.,  190  N.  Y.  252-1907,  83  N.  E.  16 461,  462 

D. 

Dadirrian  v.  Yacubian,  98  Fed.  872-1900  (C.  C.  A.  1st  Cir.) 501 

Dale  v.  Smithson,  121  Abb.  Pr.  (X.  Y.)  237-1861 502 

Daly  v.  Cornwell,  34  App.  Div.   (N.  Y.)   27-1898.  54  N.  Y.  Supp.  107 375 

Davis  v.  Kendal],  2  R.  I.  566-1850 46,  50 

Daw  v.  Enterprise  Powder  Mfg.  Co.,  160  Pa.  St.  479-1894,  28  Atl.  841 40 

Day  v.  Brownrigg,  L.  R.  10  Ch.  Div.  294-1878 103,  393 

Day  v.  Webster,  23  App.  Div.  (N.  Y.)   601-1897,  49  N.  Y.  Supp.  314 43,  53 

De  Bevoise,  Charles  R.,  &  Co.  v.  H.  &  W.  Co.,  69  N.  J.  Eq.  114-1905 275 

De  Libellis  Famosis,  5  Coke,  125a 395 

De  Long  v.  De  Long  Hook  and  Eye  Co.  89  Hun,  399-1895,  35  X.  Y.  Supp. 

509 207,  211 

De  Long  Hook  and  Eye  Co.  v.  Excelsior  Hook  and  Eye  and  Fastener  Co., 

139  Fed.  146-1905  (C.  C.  W.  D.  X.  Y.)  ;  on  appeal,  144  Fed.  682 346 

De  Manneville  v.  De  Manneville,  10  Ves.  Jr.   52-1S04 38 

De  Youngs  v.  Jung,  7  Misc.  (X.  Y.)   56-1894,  27  N.  Y.  Supp.  370 186 

Deering  Harvester  Co.  v.  Whitman  &  Barnes  Co.,  91  Fed.  376-1S98 298 

Deitsch  v.  George  R.  Gibson  Co.,  155  Fed.  383-1907  (C.  C.  N.  Y.),  Hough,  J..  505 

D.,  L.  &  W.  R.  Co.  v.  Frank,  110  Fed.  6S9-1901    (C.  C.  W.  D.  X.  Y.) 368 

Deming  v.  Chapman,  1 1  How.  Pr.  382-1854 425 

Dennis  v.  Eckhardt,  3  Grant  Caa.   (Pa.)   389-1862 40 

Dennison  Mfg.   Co.  v..  Scharf  Tag,   Label   and  Box  Co.,   135   Fed.   625-1905 

(C.  C.  A.  6th  Cir.)    282 

Dennison  Mfg.  Co.  v.  Thomas  Mfg.  Co.,  94  Fed.  651-1899   (C.  C.  Del.)    9,  26 

Derringer  v.  Plato,  29  Gal.  296-1865,  87  Am.  Dec.  170 11,  173 


xxiv  Table  of  Cases. 


PAdE. 

Devlin  v.  Devlin,  69  X.  Y.  212-1877 143 

Devlin  v.  MoLeod,  135  Fed.  164-1904   (C.  C.  W.  D.  X.  V.) 33ti,  33!) 

Diamond  Match  Co.  v.  Saginaw  Match  Co.,   142  Fed.  727-1900    (C.  C.  A.  (3th 

Cir. )  303 

Diamond  Match  Safe  Co.  v.  Safe  Harbor  Metal  Co.,  ID'.)  Fed.  154 448 

Dixon  v.  Holden,  L.  R.  7  Eq.  488-1869 391,  393,  399,  402,  403 

Dixon  Crucible  Co.  v.  Guggenheim,  2  Brewst.   (Pa.)   321-18(3!) !»8,  248,  489 

Dockrell  v.  Dougall,  80  L.  T.  Rep.  55(3-18!)!! 417 

Doctor  Miles  Medical   Co.   v.   Jayne   Drug   Co.,    147    Fed.    15-190(3    (C.   C.   A. 

2d    Cir.) 383 

Doctor  Miles  Medical  Co.  v.  Piatt,  142  Fed.  000-1U0I3    (€.  C.  H.   D.  Ill),    149 

Fed.  838-1906   (C.  C.  Mass.) 383 

Dodge   Co.,   F.   W.  v.   Construction   Information   Co.,   183   Mass.   62-1903,   66 

X.  E.  204.  60  L.  R.  A.  810 366 

Dodge  Stationery  Co.  v.  Dodge,  145  Cal.  380-1904,  78  Pac.  879 61,  211 

223,  503 

Donaldson  v.  Beckett,  2  Brown's  Pari.  Cas.  129-1774 ». 391 

Donnell  v.  Herring-Hall-Marvin  Safe  Co.,  208  U.  S.  267-1908.  .124,  155,  156,  218 

Dooling  v.  Budget  Pub.  Co.,  144  Mass.  258-1887,  10  X.  E.  809 411,  413 

Doremus  v.  Hennessy,  176  111.  608-1898.  52  X.  E.  924,  43  L.  R.  A.  797 374 

Dougherty  v.  Van  Xostrand,  1  Hoff.-Ch.   (X.  Y.)   68-1839 119 

Drake   Medicine  Co.   v.   Glessner,   68   Obio   St.   337-1893,    67   X.   E.    722,   62 

L.  R.  A.  941   .33,  150 

Draper  v.  Skerrett,  116  Fed.  206-1902   (C.  C.  E.  D.  Pa.) 11,  31,   174 

Drewry  &  Son  v.  Wood,  127  Fed.  887   (C.  C.  Minn.) 272 

Du  Bost  v.  Beresford,  2  Campb.  511-1S10 391 

Duke  v.  Cleaver,  19  Tex.  Civ.  App.  218-1898,  46  S.  W.  1128 170 

Dunbar  v.  Glenn,  42  Wis.  118-1877 246 

Dung  v.  Parker.  52  X.  Y.  494-1873 371 

Dunlop   Pneumatic   Tire   Co.,    Ltd.   v.   Dunlop   Motor   Co.,   Ltd.,  22   R.   P.   C. 

533-1905  ( Ct.  Sess.  Scotland) 145,  208 

Dunnaohie  v.  Young,  10  Scot.  Sess.  Cas.  (4th  ser.)  874-1883 240 

Dunn  Co.  v.  Trix  Mfg.  Co.,  50  App.  Div.    (X.  Y.)    75-1900,  03  X.  Y.  Supp. 

333 72 

Duryea  v.  Manufacturing  Co.,  79  Fed.  651,  25  C.  C.  A.  139 .  .    155 

Dutton  &  Co.,  E.  P.  v.  Cupples,   117  App.  Div.    (X.  Y.)    1st  Dept.   172-1907, 

102  X.  Y.  Supp.  309 287 

E. 
Eastman  Kodak  Co.  v.  Reichenbach  et  al.,  20  X.  Y.  Supp.  110-1892,  1   Affd. 

79  Hun,  183 433 

Eastman    Photographic    Co.,   Ltd.   v.    Jobn    Griffith's    Cycle    Corp..    Ltd.,    15 

R.  P.  C.  105-1898   ' 265 

Eekhart  v.  Consolidated  Milling  Co..  72  111.  App.  70-1897 49,  50,  325 

Edelsten  v.  Edelsten,  1  De  G.  J.  &  S.  185-1863 13,  467 

Edelsten  v.  Vick,  1 1  Hare,  78-1853 495 

Edison  v.  Thomas  A.   Edison,  Jr.,  Chemical   Co.,   128   Fed.  957-1904    (C.   C. 

Del.)   407 

Edison  Storage  Battery  Co.  v.  Edison  Automobile  Co.  of  Wasbington,  D.  C, 

67  X.  J.  Eq.  44-1 904.   56  Atl.   861 445 

Edison  Mfg.  Co.  v.  Gladstone, X.  J.  Eq.  ,  58  Atl.  391-1903 294 


Table  of  Cases.  xxv 

PAGF. 

Edison  v.  Mills-Edisonia  (X.  J.  Ch.)   70  Atl.  101-100S 303 

Eggers  v.  Hink,  63  Cal.  445-1883,  49  Am.  Rep.  96 75,  186 

Eisemdan  v.  Schiffer,  157  Fed.  473-1907   (C.  C.  N.  Y.) 505 

Elgin  Butter  Co.  v.  Elgin  Creamery  Co.,  155  111.  127-1895,  40  N.  E.  616 58 

Elgin  Nat.  Watch  Co.  v.  Eppenstein,  1  111.  C.  C.  602-1892 446 

Elgin  National  Watch  Co.  v.  Illinois  Watch  Case  Co.,  179  U.  S.  665-1900,  21 

Supp.  Ct.  270,  44  L.  ed.  365 43,   52,  442 

Elgin  Nat.  Watch  Co.  v.  Loveland,  132  Fed.  41-1904   (C.  C.  X.  D.  Iowa) 252 

443,  444,  465 

Elliott  &  Co.  v.  Hodgson,  19  R.  P.  C.  518-1902 288 

Emack  v.  Kane,  34  Fed.  46-1888  (C.  C.  111.) 403,  405,  415 

Emerson  v.  Badger,  101  Mass.  82-1S69 121,  156 

Emperor  of  Austria  v.  Day  &  Kossuth,  3  De  G.  F.  &  J.  217-1861 391,  399 

England  v.  Downs,  6  Beav.  269-1842 90,  122 

England  v.  N.  Y.  Publishing  Co.,  S  Daly  (N.  Y.),  375-1S78 152 

Eno  v.  Dunn  &  Co.,  10  R.  P.  C.  261-1S93 265 

Enterprise  Mfg.  Co.  v.  Landers,  Frary  &  Clark,  131   Fed.  240-1904   (C.  C.  A. 

2d  Cir.)   61,  79,  262,  286,  292,  445,  451 

Epperson,  J.  W..  &  Co.  v.  Blumenthal,   (Ala.)   42  So.  863-1906 4S5 

Estes  v.  Leslie,  27  Fed.  22-1886,  29  Fed.  91-1886   (C.  C.  S.  D.  N.  Y.) 196,  273 

Estes  v.  Worthington,  22  Fed.  822-1885,  30  Fed.  405,  31  Fed.  154-1887   (C.  C. 

S.  D.  N.  Y.)    196,  444,  511 

Eureka  Fire  Hose  Co.  v.  Eureka  Rubber  Mfg.  Co.,  69  N.  J.  Eq.  159-1905,  60 

Atl.  561,  modification  refused,  s.  c,  65  Atl.  870-1907 266 

Evans  v.  Von  Laer,  32   Fed.   153-1887 327 

Evenson  v.  Spaulding,  150  Fed.  517-1907    (C.  C.  A.  9th  Cir.),  9  L.  R.  A.  N. 

S.   904,  note 3S5 

Exchange  Telegraph  Co.,  Ltd.  v.  Central  News,  2  Ch.  4S-1897 307,  423 

Exchange  Telegraph  Co.,  Ltd.  v.  Gregory  &  Co.,  73  L.  T.  120-1895,  1  Q.  B.  D. 

147-1896 366,  367,  423 

F. 

Faber  v.  Faber,  124  Fed.  603-1903   (C.  C.  S.  D.  N.  Y.) 53,  55,  62,  451 

Fahrney,  Dr.  Peter  H.,  &  Sons  Co.  v.  Ruminer,  153  Fed.  735-1907   (C.  C.  A. 

7th  Cir. )     88,  483,  501,  510 

Fairbank,  N.  K.,  Co.  v.  R.  W.  Bell  Mfg.  Co.,  77  Fed.  869-1896   (C.  C.  A.  2d 

Cir.)   59,  62,  74,  343,  454,  471 

Fairbank,  N.  K.,  &  Co.  v.  Des  Moines  Scale  and  Mfg.  Co.,  96  Fed.  972 447 

Fairbanks  v.  Jacobus,   14  Blatchf,  337 296 

Fairbank.  N.  K.,  &  Co.  v.  Luckel,  King  and   Cake  Soap  Co.,  102  Fed.  327,  106, 

Fed.  498-1901  269,  271,  457 

Fairbank.  N.  K.,  Co.  v.  Swift  &  Co.,  64  111.  App.  477-l»96 264,  470 

Fairbank,   N.   K.,   Co.   v.   Windsor,   61    C.   C.   A.   233-1903,    124   Fed.   200-35 

( C.  C.  A.  2d  Cir. )    53 

Falk   v.   American   West  Indies   Trading  Co.,   ISO  N.  Y.   445-1905,   73   N.   E. 

1123,  1  L.  R.  .A.  X.  S.  704,  note 104 

Falk  v.  American  West  Indies  Co.,  71  App.  Div.   (N.  Y.)   320-1902,  75  N.  Y. 

Supp.  964 153 

Farina  v.  Silverlock,  4  Kay  &  J.  650-1858 41 

Farmers'  Loan  &  Trust  Co.  v.  Farmers'  Loan  &  Trust  Co.  of  Kansas,  1  X.  Y. 

Supp.  44-1SS8,  21  Abb.  X.  C.  104 160,  201,  205,  225 


xxvi  Table  of  Cases. 


PAGE. 

Farquhar,  A.  B.  &  Co.  v.  National  Harrow  Co.,  102  Fed.  714-1000  (C.  C.  A. 

3d  Cir.),  42  C.  C.  A.  600,  49  L.  R.  A.  755 410,  411,  415 

Faulder  &  Co,  Ltd.  v.  O.  &  G.  Rushton,  Ltd.,  20  R.  P.  C.  477-1902 107,  109 

172,  233,  475 

Fay  v.  Lambourne,  124  App.  Div.  245-1908  ( 1st  Dept.) 476 

Feder  v.  Benkert,  18  C.  C.  A.  549,  70  Fed.  613-1895 99,  248,  489 

Pels  v.  Christopher  Thomas  &  Bros.,  21  R.  P.  C.  85-1903   (High  Ct.  of  App.)  169 

Felton  v.  Sellers  Co.,  4  Brewst.   (Pa.)   42-1867   (Sup.  Ct.  Pa.) 489 

Fetridge  v.  Wells,  4  Abb.  Pr.    (N.  Y.)    144-1857,  13  How.  Pr.   (N.  Y.)   385- 

1857 477,  481,  482,  483 

Filkins  v.  Blackmail,  13  Blatehf.   (Conn.)  440-1870 109 

Filley  v.  Fassett,  44  Mo.  168-1869 50,  266,  504 

Fine  Cotton  Spinners  and  Doublers  Assn.,  Ltd.  v.  Harwood,  Cash  &  Co.,  Ltd., 

2  Ch.  184-1907   143 

Fischer  v.  Blank,  138  N.  Y.  244-1893,  33  N.  E.  1040 72,  337,  462 

Fish  Bros.  Wagon  Co.  v.  Fish  Bros.  Mfg.  Co.,  95  Fed.  457-1899  (C.  C.  A.  8th 

Cir.)  102 

Fish  Bros.  Wagon  Co.  v.  La  Belle  Wagon  Works,  82  Wis.  546-1 S92,  52  N.  W. 

595,  16  L.  R.  A.  453 99,   114,  147 

Fisk,  A.  G.  v.  Fisk,  Clark  &  Flagg,  77  App.  Div.   (N.  Y.)   83-1902,  79  N.  Y. 

Supp.  37 ' 120,  121 

Flaccus  v.  Smith,  199  Pa.  St.  128-1901,  48  Atl.  894,  54  L.  R,  A.  640 359 

Flagg  Mfg.  Co.  v.  Holway,  178  Mass.  83-1901,  59  N.  E.  667 289,  296 

Flavel  v.  Harrison,  10  Hare,  467-1853,  19  Eng.  L.  &  Eq.  15 494 

Fleckenstein  Bros.  Co.  v.  Fleckenstein,  66  N.  J.  Eq.  252-1904,  57  Atl.  1025.  .  .  374 

Fleischmann  v.  Schuckmann,  62  How.  Pr.  92-1881 253 

Fleischmann  v.  Starkey,  25  Fed.  127-1885  (€.  C.  R.  I.) 82,  310 

Fleming  v.  Newton,  1  H.  L.  Cas.  363-1848 399 

Flint  v.  Hutchinson  Smoke  Burner  Co.,  110  Mo.  492-1892,  19  8.  W.  804,  16 

L.  R.  A.  243   40S 

Ford  v.  Foster,  L.  R.  7  Ch.  App.  611-1872 479,  514 

Forney  v.  Engineering  News  Publishing  Co.,  10  N.  Y.  Supp.  814-1890 191 

Forsythe  v.  Guzy,  N.  Y.  Supr.  Ct.,  O'Gorman,  J.,  Nov.  26,  1907 270 

Fort  Pitt  Building  &  Loan  Assn.,  etc.  v.  Model  Plan  Building  &  Loan  Assn., 

159  Pa.  St.  308-1893   199 

Foss  v.  Roby,  195  Mass.  292,  81  N.  E.  199-1907 115,  116 

Foutz,  David  E.,  Co.  v.  S.  A.  Foutz  Stock  Food  Co.,  163  Fed.  408-1908  (C.  C. 

Md.)   137 

Fox,  George  G.,  Co.  v.  Glynn.  191   Mass.  344-1906,  78  N.  E.  89,  9  L.  R.  A. 

N.  S.  1096,  note  285,  291 

Fox,  George  G.,  Co.  v.  Hathaway,   199  Mass.  99-1908,  85  N.   E.  417 291 

Fowle  v.  Park,  131  U.  S.  88-1889,  33  L.  ed.  67,  9  Sup.  Ct.  658.  .123,  381,  422,  423 

Fralich  V.  Despar,  165  Pa.  St.  24-1894,  30  Atl.  521 429 

Francis  v.  Flinn,  118  U.  S.  385-1886,  30  L.  ed.  105,  6  Sup.  Ct.  1172.   405,  406,  413 

Franck  v.  Frank  Chicory  Co.,  95  Fed.  818-1899   ( C.  C.  E.  D.  Wis.)  .  .    83,  310,  340 

Frazer  v.  Frazer  Lubricator  Co.,  121  111.  147-1880.  13  N.  E.  639 98,  108,  110 

Frazier  v.  Dowling,  39  S.  W.  45-1897,  18  Ky.  L.  Rep.  1109 161,  248 

French  Republic  v.  Saratoga  Vichy  Co.,   191   U.   S.  427-19-03,  48  L.  ed.  247, 

24  Sup.  Ct.  145 232,  514 

Frese  v.  Baohof,  14  Blatehf.  432-5-1878 312 

Frost,  Geo.,  Co.  v.  E.  B.  Estes  &  Sons,  156  Fed.  677-1907   (C.  C.  Mass.) 293 


Table  of  Cases.  xxvii 

PAGF. 

Fuller  v.  Huff,  104  Fed.  141-1900  (C.  C.  A.) ,  51  L.  R.  A.  332 58 

Fullwood  v.  Fullwood,  9  Ch.  Div.  170-1878 183,  500 

Fulton  v.  Seller  &  Co.,  4  Brewst.  (Pa.)  42 248 

Funke  v.  Dreyfus  &  Co.,  34  La.  Ann.  80-1882 493 

G. 

Gage-Downs  Co.  v.  Featherbone  Corset  Co.,  83  Fed.  213-1897  (Head note)  ...  256 
Gannett  v.  Ruppert,  127  Fed.  962-1904  (C.  C.  A.  2d  Cir.),  revg.  119  Fed.  221.  193 
Garrett,  W.  E.,  &  Sons  v.  T.  H.  Garrett  &  Co.,  7S  Fed.  472-1896,  24  C.  C.  A. 

173 126,   139,  212 

Garst  v.  Charles,  187  Mass.  144   382 

Gartside  v.  Outram,  3  Jur.  N.  S.  39-1856 435 

Gato  v.  El  Modelo  Cigar  Mfg.  Co.,  6  L.  R.  A.  823-1889 46S 

Gebbie  v.  Stitt,  82  Hun   (N.  Y.),  93-1894.  31  N.  Y.  Supp.  102   (Gen.  T.  4th 

Dept. )  245 

Gee  v.  Pritchard,  2  Swanst.  403-1818 38,  391.  399.  400 

Geraner  Stove  Co.  v.  Art  Stove  Co.,  150  Fed.  141-1907   (C.  C.  A.  6th  Cir.)  ...      87 

Gessler  v.  Grieb,  80  Wis.  21-1891,  4S  ST.  W.  1098 342 

Gibblett  v.  Read,  9  Mod.  459-1743 89,  425 

Gilka  v.  Mihalovitoh,  50  Fed.  427-1892   (C.  C.  Ohio) 514 

Gillis  v.  Hall,  2  Brewst.   (Pa.)   342-1869 98 

Gillott  v.  Ester-brook,  48  N.  Y.  374-1872,  47  Barb.    (N.  Y.)    455-1867 280,  509 

Gillott  v.  Kettle,  3  Duer  (N.  Y.),  624-1854 280,  374 

Ginesi  v.  Cooper  &  Co.,  14  Oh.  Div.  596-1880 91,   111,  112,  113 

Giragosian  v.  Chutjian,  194  Mass.  504-1907,  80  1ST.  E.  647-1907 86,  462 

Glen  Cove  Mfg.  Co.  v.  Ludeling,  22  Fed.  823-18S5  (C.  C.  S.  D.  N.  Y.) 273 

Glen  &  Hall  Mfg.  Co.,  The  v.  C.  S.  Hall,  61  N.  Y.  226-1874 24,   187 

Glencoe  Land,  etc.,  Co.  v.  Hudson  Brothers,  etc.,  Co.,   138  Mo.  439-1896,  40 

S.  W.  93,  30  L.  R.  A.  804 359,  366 

Glendon  Iron  Co.  v.  Uhler,  75  Pa.  St.  467-1874 231 

Glenny  v.  Smith,  2  Drew.  &  Sm.  476-1865 182,  183 

Globe-Wernicke   Co.    v.    Brown   &    Besly,    121    Fed.    90-1902    (C.   C.   A.    7th 

Cir.)    28,  286 

Globe-Wernicke  Co.  v.  Fred  Macey  Co.,  119  Fed.  696-1902  (C.  C.  A.  6th  Cir.).  285 
Gluekman  v.  Strauch,  99  App.  Div.   (N.  Y.)  361-1904,  91  N".  Y.  Supp.  223.  .  .   491 

Godillot  v.  American  Grocery  Co.,  71  Fd.  873-1896   (C.  C.  N.  J.) 277 

Goodman  v.  Bohls,  3  Tex.  Civ.  App.  183-1893,  22  S.  W.  11 53 

Goodwin  v.  Hamilton,  19  Pa.  Co.  Ct.  652-1897,  6  Pa.  Dist.  705 186 

Goodwin  v.  Ivory  Soap  Co.,  IS  R.  P.  C.  389-1901 84 

Goodyear  India  Rubber  Glove  Mfg.  Co.  v.  Goodyear  Rubber  Co.,   128  U.  S. 

598-1888,  32  L.  d.  538,  9  Sup.  Ct.  166 144 

Goodyear  Rubber  Co.  v.  Day,  22  Fed.  44-1884  (C.  C.  E.  D.  Mo.) 447 

Gorham  v.  Emery  &  Co.,  92  Fed.  779 ;  affd.  104  Fed.  243 437 

Gouraud  v.  Trust,  6  Thomps.  &  Cook  (N.  Y.) ,  133-1875 159 

Gout  v.  Alepoglu,  6  Beav.  69-1833 175 

Gove  v.  Condon,  40  L.  R.  A.  382 376 

Graham  v.  Plate,  40  Cal.  593-1871 45S 

Grand  Hotel  Co.  v.  Wilson,  21  R.  P.  C.  117-1903 246 

Grand  Lodge  of  the  Ancient  Order  of  United  Workmen  of  the  State  of  Iowa 

v.  Graham,  31  L.  R.  A.  133-1895,  96  Iowa,  592,  65  N.  W.  837 199 

Grand  Lodge,  Knights  of  Pythias  v.  Creswill,  128  Ga.  775-1907,  58  S.  E.  163.   204 


xxviii  Table  of  Cases. 

PAGE. 
Grand  Rapids  School  Furniture  Co.  v.  Haney  School  Furniture  Co.,  92  Mich. 

558-1892,  52  N.  W.  1009,  16  L.  R.  A.  721 407 

Greacen  v.  Bell,  115  Fed.  553-1902  (C.  C.  X.  J.) 109 

Green,  Re,  8  Pat.  Off.  Gaz.  729-1875 255 

Green  v.  Button,  2  C.,  M.  &  R  707 352,  302 

Green  v.  Folgham,  1  Sim.  &  St.  398-1823 429,  437 

Greene,  Tweed  &  Co.  v.  Mfrs.  Belt  Hook  Co.,  15S  Fed.  040-1906   (C.  C.  111.)  .  303 

Gregory  v.  Duke  of  Brunswick,  6  M.  &  G.  953-1844 370 

Grierson  v.  Birmingham  Hotel  Co.,  IS  R.  P.  C.  158 474 

Grow  v.  Seligman,  47  Mich.  607-1882,  11  N.  W.  404 100 

Gruber  Almanack  Co.  v.  Swingley,  103  Md.  362,  63  Atl.  6S4-1906 492 

Guardian  Fire  and  Life  Assur.  Co.  v.  Guardian  and  Gen.  Ins.  Co.,  50  L.  J. 

Ch.  N.  S.  253-1880  58 

Gunter  v.  Astor,  4  J.  B.  Moore,  12-1819 352,  363 

H. 

Hagan  &  Dodd  Co.  v.  Rigbers,  1  Ga.  App.  100,  57  S.  E.  970-1907 458 

Hainque  v.  Cyclops  Iron  Works,  136  Cal.  351-1902,  68  Pac.  1014 11,  24,  174 

Hall's  Appeal,  60  Pa.  St.  458-1869,  100  Am.  Dec.  5S4 105,  111 

Hall  v.  Barrows,  9  Jur.  N.  S.  4S3-1863,  4  De  G.  J.  &  S.  150-1863 .  .21,  22,  24,  119 

Hall  v.  Stern  (C.  C.) ,  20  Fed.  788  .'. 459 

Hall's  Safe  Co.  v.  Herring-Hall-Marvin  Safe  Co.,  146  Fed.  37-1906   (C.  C.  A. 

6th  Cir.),  208  U.  S.  554-1908 444,  455 

Hall  Signal  Co.  v.  Railway  Signal  Co.,  153  Fed.  907 308 

Hallett  v.  Cumston,  110  Mass.  29-1S72 119 

Hammer  v.  Barnes,  26  How.  Pr.  174-1863  420 

Hanna  v.  Andrews,  50  Iowa,  462-1879   Ill 

Hansen  v.  Siegel-Cooper  Co.,  106  Fed.  691-1900   (C.  C.  S.  D.  N.  Y.) 169,  450 

Hardy  v.  Cutter,  3  U.  S.  Pat.  Gaz.  468-1873,  16  Phila.  182 158 

Harper  &  Bros.  v.  Lare,  103  Fed.  203-1900  (C.  C.  A.  3d  Cir.)    190 

Harper  v.  Pearson,  3  L.  T.  N.  S.  547-1861 28,  187 

Harrison  v.  Gardner,  2  Mad.  198-1817  118 

Harrison  v.  Taylor,  11  Jur.  N.  S.  408-1865 510 

Hart  v.  Aldridge,  1  Cowp.   (N.  Y.)   54-1774 352,  363 

Hartnett  v.  Plumbers,  etc.,  160  Mass.  229 364 

Harvey,  G.  F.,  Co.  v.  National  Drug  Co.,  75  App.  Div.   (N.  Y.)    103-1902,  77 

N.  Y.  Supp.  674 432 

Haskins  v.  Royster,  70  N.  C.  001-1874 363,  366 

Havana  Commercial  Co.  v.  Nichols,  155  Fed.  302-1907   (C.  C.  S.  D.  N.  Y.)  .  .  512 

Hawker  v.  Stourfield  Park  Hotel  Co.,  Wkly.  Notes,  51-1900 417 

Hazard  v.  Caswell,  93  N.  Y.  259 247 

Hazelton   Boiler   Co.   v.   Hazelton   Tripod   Boiler   Co.,    142    111.    494-1892,   30 

N.  E.  339   97,  108,  201,  217 

Hazelton   Boiler   Co.   v.    Hazelton   Tripod   Boiler    Co.,    137    111.   231-1891,   28 

N.  E.  248 198 

Heath  v.  American  Book  Co.,  97  Fed.  533-1899   (C.  C.  W.  Va.) 374 

Heaton,  In  re,  L.  R.  27  Ch.  Div.  570-1884 516 

Hegeman  v.  Hegeman,  8  Daly  (N.  Y.) ,  1-1880 247,  489 

Heide  v.  Wallace  &  Co.,  135  Fed.  346-1905    (C.  C.  A.  3d  fir.) 261 

Heinisch's  Sons'  Co.  v.  Boker,  86  Fori.  765-1898    (C.  C.  S.  D.  N.  Y.) 60 

Heinz  v.  Lutz  Bros.,  146  Pa.  St.  592-1891,  23  Atl.  314 82,  345 


Table  of  Oases.  xxix 

PAGE. 

Hedriks  v.  Montagu,  50  L.  J.  Ch.  X.  S.  456-1881 445,  446 

Hennessy  v.  Brannschweiger  &  Co.,  89  Fed.  664-1898   (C.  C.  Oal.) 6 

Hennessy  v.  Dompe,  19  R.  P.  C.  333-1962 311 

Hennessy  v.  Herrmann,  89  Fed.  669-1898  (€.  C.  N.  D.  Gal.) 41 

Hennessy  v.  Hogan,  (i  \Y.,  W.  &  A'B.  225 325 

Hennessy  v.  Neary,  19  R.  P.  C.  36-1901 325 

Hennessy  v.  White,  6  W.,  W.  &  A'B.  216-1869  (Victoria) 325 

llerring-Hall-Marvin  Safe  Co.  v.  Hall's  Safe  Co.,  208  U.  S.  554-1908.  ...  122,   157 

232,  457 

Hier  v.  Abrahams,  82  N.  Y.  519-1880 46S 

Higgins,  C.  S.,  Co.  v.  Higgins  Soap  Co.,   144  N.  Y.  462-1895,   18  N.  E.  714, 

39  X.  E.  490,  27  L.  R.  A.  42 99,  108,   130,  148,  198,  217,  220 

Hildreth  v."  McCaul,  70  App.  Div.    (X.  Y.)    162-1902    (1st  Dept.),  74  X.  Y. 

Supp.    1072    117 

Hildreth  v.  McDonald  Co..  104  Mass.  16-1895.  41  N.  E.  56 68,  343 

Hilreth  v.  Norton,  159  Fed.  428-1908   (C.  C.  A.) 308 

Hildreth  v.  Sparks  Mfg.  Co.,  U9  Fed.  484-1899   (C.  C.  S.  D.  X.  Y.) 41 

Hill  v.  Hart  Davies,  L.  R.  21  Ch.  Div.  798-1882 393 

Hill  v.  Lockwood.  32  Fed.  389-1887   (C.  C.  E.  D.  Wis.) 247 

Hillside  Chemical  Co.  v.  Munson  &  Co.,  146  Fed.  198-1906   (C.  C.  Conn.)  ....   473 

Hilson  Co.  v.  Foster,  SO  Fed.  896-1897   (€.  C.  S.  D.  X.  Y.) 22 

Hires,  Chas.   E.,   Co.  v.   Consumers'   Co.,   100   Fed.   809-1900    (C.  €.  A.   7th 

Cir.)  322,  452 

Hires,   Charles   E.,   Co.  v.   George   A.   Hires,    182   Pa.    St.   346-1897,   37   Atl. 

1117 147,   150 

Hirst  v.  Denham,  L.  R.  14  Eq.  Gas.  542-1872 255 

Hobbs  v.  Francais,  19  How.  Pr.   (X.  Y*. )   567-1860 477,  490 

Hogg  v.  Kirby,  8  Ves.  Jr.  215-1803 . 12,     18 

Holbrook  v.  Xesbitt,  163  Mass.  120-1895,  39  X.  E.  794   (from  head  note) 182 

Holden,  Admr.  v.  M'Makin,  1  Pars.  Sel.  Cas.   (Pa.)   270-1847 119 

Hollenbeck  v.  Restine.  1 14  Iowa,  358 376 

Holloway  v.  Clent,  20  R.  P.  C.  525-1903 93 

Holloway  v.  Holloway,  13  Beav.  209-1850 126,   127,   150,  170 

Holmes,  Booth  &  Haydens  v.  Holmes,  Booth  &  Atwood  Mfg.  Co.,  37   Conn. 

27S-1870 46,  49,  50,  62,  108,  147,  217,  218,  503 

Hookham  v.  Pottage,  L.  R.  8  Ch.  App.  91-1872 182,  183 

Hopkins,  In  re,  29  App.  Gas.   (D.  C.)   118-1907 259 

Hopkins  Amusement  Co.  v.  Frohman,  103  111.  App.  613-1902 32,   194 

Horton  Mfg.  Co.   (X.  Y.)   v.  Horton  Mfg.  Co.   (Ind.),  18  Fed.  S16-1883 98 

Hostetter  v.  Adams,  10  Fed.  838-1882   (C.  C.  S.  D.  X.  Y.) 327 

Hostetter  Co.  v.  Becker,  73  Fed.  297-1896   (C.  C.  S.  D.  X.  Y.) 325 

Hostetter  Co.  v.  Brueggeman-Reinert  Distilling  Co.,  46  Fed.  1SS-1891    (C.  C. 

E.  D.  Mo. )    326 

Hostetter  v.  Fries,  17  Fed.  620-1883   (G.  C.  S.  D.  X.  Y.) 145 

Hostetter  v.  Martinoni,  110  Fed.  524-1901    (C.  C.  X.  D.  Cal.) 327,  475 

Hostetter  Co.  v.  Sommers,  84  Fed.  333-1897    (C.  G.  S.  D.  X.  Y.) 81,  326 

Hovey  v.  Rubber  Tip  Pencil  Co.,  57  X.  Y.  119-1874 410 

Howard  v.  Henriques,  3  Sandf.   (X.  Y.)   725-1S51 28,   179,  272 

Howard  v.  Taylor.  90  Ala.  241-1889,  8  So.  36 89 

Howe  v.  Searing,  6  Bosw.  (X.  Y.)  354-1860 119 


xxx  Table  of  Cases. 

PAGE. 

Howe  Scale  Co.  v.   Wyckoff,   Seamans   &  Benedict,   198  U.   S.    118-1905,   49 

L.  ed.  972,  25  Sup.  U.  609 2G,   150,   197,   108,  209,  210 

Howes,  S.,  Co.  v.  Howes  Grain   (leaner  Co.,  24  Misc.    (N.  Y.)    83-1898,  52 

N.  V.  Supp.  408 122 

Howes,  S..  Co.  v.  Howes  Grain  Cleaner  Co.,  19  App.  Div.   (N.  Y.)    025-1S97, 

40  X.  Y.  Supp.  105 215,  446 

Hoxie  v.  Chaney,  143  Mass.  592,  10  N.  E.  713 95,  98,  111 

Hoyt  v.  Hoyt,  143  Pa.  St.  023-1891,  22  Atl.  755,  13  L.  R.  A.  343 314.  492 

Hudson  v.  Osborne,  39  L.  J.  Ch.  N.  S.  79-1869 107 

Huggonson  'Case,  2  Atk.  48S-1742 399 

Hunt  v.  N.  Y.  Cotton  Exchange,  205  U.  S.  322-1907,  51   L.  ed.  821,  7   Sup. 

Ct.  529 421 

Huntley  &  Palmer  v.  Reading  Biscuit  Co.,  Ltd.,   10   R.  P.  C.   277-1893 242 

445,  446 

Huwer  v.  Dannenhoffer,  82  XT.  Y.  499-18S0 100 

Hygeia  Distilled  Water  Co.  v.  Consolidated  Ice  Co.,  144  Fed.  139-1906  (C.  C. 

Pa.),  151  Fed.  10-1907   (C.  C.  A.  3d  Cir.) 172,  173 

I. 

Ibbotson  v.  Peat,  3  H.  &  C.  644 350 

Ide  v.  Engine  Co.,  31  Fed.  901 ...  : 405 

Illinois  Cent.  R.  Co.  v.  Oaffrey,  128  Fed.  770-1904   (C.  C.  Mo.) 368 

Imperial  Mfg.  Co.  v.  Schwartz,  105  111.  App.  525-1903 207,  215,  216 

Improved  Fig  Syrup  Co.  v.   California  Fig  Syrup  Co.,  4  C.  C.  A.  264-1893, 

54  Fed.  175   239 

Inland  Rev.  Commissioners  v.  Muller  &  Co.,  App.  Cas.  217-1901 1901 

Insurance  Oil  Tank  Co.  v.  Scott,  33  La.  An«.  946-1881 86.  490 

International  Cheese  Co.  v.  Phenix  Cheese  Co.,  118  App.  Div.    (N.  Y.)   499- 

1907,  103  N.  Y.  Supp.  302   (3d  Dept.)    255 

International   Committee.  Y.  W.   C.   A.  v.   Y.   W.   C.   A.  of   Chicago,   194   111. 

194-1902,  62  N.  E.  551,  56  L.  R.  A.  888   = 58,  202 

International  Plasmon,  Ltd.  v.  Plasmonade,  Ltd.,  23  R.  P.  C.  543-1905   (Ch. 

Div.)  271 

International  Register  Co.  v.  Recording  Fare  Register  Co.,  151  Fed.  199-1907 

C.  C.  A.  2d  Cir.) 437 

International  Silver  Co.  v.  Rogers,  07  Atl.  105-1907 144 

International    Silver   Co.   v.   Rogers   Bros.    Cutlery   Co.,    130   Fed.    1019-1905 

(€.  C.  W.  D.  Mich.  5th  Dept. )    137 

International  Silver  Co.  v.  Rogers,  67  Atl.   (X.  J.)    105-1907 135,  146 

International  Silver  Co.  v.  W.  H.  Rogers  Corp.,  66  X.  J.  Eq.   119-1904,  57 

Atl.  1037 136,  208 

International  Silver  Co.  v.  Simeon  L.  &  George  H.  Rogers  Co.,  110  Fed.  955- 

1901    (C.  C.  Conn.)    136>  448 

International  Silver   Co.   v.   Win.   G.   Rogers,    113    Fed.   526-1902;   affd.,    118 

Fed.  133   137 

International   Silver   Co.   v.   Win.  H.   Rogers   Corp.,   67   N.   J.   Eq.   646-1905, 

60  Atl.  187,  revg.  66  X.  J.  Eq.  119,  57  Atl.  1037 137 

International  Tooth  Crown  Co.  v.  Carmichael,  44  Fed.  350 405 

International  Trust  Co.  v.  International  Loan  &  Trust  Co.,   153  Mass.  271- 

1891,  26  N.  E.  693,  10  L.  R.  A.  753 206 


Table  of  Cases.  xxxi 

PAGE. 

Investor  Publishing  Co.  of  Mass.  v.  Dobinson,  72  Fed.  603-1896;  modified  in 
82  Fed.  56-1897   (C.  C.  S.  D.  Cal.) 58,   108,   193,   194,  204 

Iron-Ox  Remedy  Co.,  Ltd.  v.  Co-operative  Wholesale  Soc.,  Ltd.,  24  R.  P.  C. 
425-1907   ( Oh.  Div.,  Parker,  J. ) 272 

Isaacson  v.  Thompson,  41  L.  J.  Ch.  N.  S.  101-1871 511 

J. 

Jackson  v.  Stairfield,  137  Ind.  592 361 

James  v.  James,  13  Eq.  421-1872 427 

Jamieson  v.  Jamieson,  15  R.  P.  C.  169-1897 143 

Jennings  v.  Johnson,  37  Fed.  364-1888   (C.  C.  Me.) 248,  340,  489,  491 

Jewish  Colonization  Assn.  v.  Solomon,  125  Fed.  994-1903   (C.  C.  N.  Y.)  .  .443,  444 

Johnson  v.  Bauer  &  Black,  82  Fed.  662-1897 316 

Johnson  v.  Helleley,  2  De  G.  J.  &  S.  446-1864 Ill 

Johnson  v.  Hitchcock,  3  N.  Y.  Supp.  680-18S8   (Sup.  Ct.  Sp.  T.) 186 

Johnson  &  Johnson   v.   Seabury  &  Johnson,   69   N.  J.   Eq.   696-706,   61   Atl. 

5-1905,         X.  J.  Eq.       ,  67  Atl.  36-1907 480,  497,  498 

Johnston  &  Co.  v.  Orr  Ewing  &  Co.,  L.  R.  7  App.  Cas.  219-25-1SS2 75 

Jones  v.  Goodrich,  17  111.  380 188 

Jones  v.  Hallworth,  14  R.  P.  C.  225-1897 313,  462 

Jones  v.  Stanly,  76  N.  C.  355-1877 361,  362,  364,  365 

Jones  &  Jester  v.  Blocker,  43  Ga.  331-1871 363 

Julian  v.  Hoosier  Drill  Co.,  78  Ind.  40S-1S81 171,  504,  507 

Jurgens,  Andrew,   Co.  v.  Woodbury,  56  Misc.    (X.  Y.)    404,   106  X.   Y.  Supp. 

571-1907   (Sup.  Ct.  N.  Y.  Sp.  T.) 98 

K. 

Kann  v.  Diamond  Steel  Co.,  89  Fed.  700-1898  (C.  C.  A.  8th  Cir.),  32  C.  C.  A. 

324 62 

Katbreiner's  Malzkaffee  Fabrik  v.  Pastor  Kneipp  Med.  Co.,  82  Fed.  321-1897, 

27  C.  C.  A.  351,  53  U.  S.  App.  425 222,  318 

Keeble  v.  Hickeringill,   11  East,  574 349,  350,  351,  352,  354 

Keller  v.  B.  F.  Goodrich  Co.,  117  Ind.  556-188S,  19  N.  E.  196 59,  309 

Kelley  v.  Ypsilanti  Dress  Stay  Co.,  44  Fed.  23 407 

Kennedy  v.  Press  Pub.  Co.,  41  Hun  ( N.  Y. ) ,  422-1886 413 

Kentucky  Distillers  and  Warehouse  Co.  v.  Wathen,  110  Fed.  641-1901   (C.  C. 

Ky. )   268 

Kidd  v.  Horry,  2S  Fed.  773-1886   (C.  C.  Pa.) 402,  403,  411,  413 

Kidd  v.  Johnson,  100  U.  S.  617-1879,  25  L.  ed.  769 98,  101,  105,  108 

Kiernan  v.  Manhattan  Quotation  Telegraph  Co.,  50  How.  Pr.    (N.  Y.)    194- 

1876 41S,  421 

King  &  Co.  v.  Gillard,  21  R.  P.  C.  589 314 

King  &  Co.,  Ltd.  v.  Gillard  &  Co.,  Ltd.,  22  R.  P.  C.  327-1905,  affg.  21  R.  P.  C. 

589 ' 345 

Kipling  v.  G.  P.  Putnam's  Sons,  120  Fed.  631,  65  L.  R.  A.  873 53 

Kline  v.  Eubanks,  109  La.  241-1802,  33  So.  211 359 

Klotz  v.  Hecht,  73  Fed.  822-1896  (C.  C.  S.  D.  N.  Y.) 340 

Knight  &  Sons  v.  Crisp  &  Co.,  21  R.  P.  C.  070-1904 475 

Knott  v.  Morgan,  2  Keen,  213-1836 14,  16,     58 

Koebel   v.    Chicago   Landlord's   Protective   Assn.,    210    111.    176-182-1904,    71 

N.  E.   362 57 


xxxii  Table  of  Cases. 


PAGE. 

Koehler  v.  Sanders,  122  N.  Y.  65,  4  L.  R.  A.  576,  25  N.  E.  235 259 

Kohler  Mfg.  Co.  v.  Beeshore,  8  C.  C.  A.  215,  50  Fed.  572 487 

Kostering  v.  Seattle  Brewing  &  Malting  Co.,  116  Fed.  620-1902   (C.  C.  A.  9th 

Cir.)   76,  339 

Krauss  v.  Jos.  R.  Peebles'  Sons  Co.,  58  Fed.  585-1S93   (C.  C.  Ohio) 483,  485 

Kronthal  Waters,  Ltd.  v.  Becker,  137  Fed.  649-1905  (C.  C.  E.  D.  Pa.) 323 

Kroppf  v.  Furst,  94  Fed.  150-1899    ( C.  C.  N.  J. ) 71 

L. 

Labouchere  v.  Dawson,  L.  R.  13  Eq.  Cas.  322-1872 Ill,  113,  439 

La-lance  &  Grosjean  Mfg.   Co.  v.  National   Enameling  &   Stamping   Co.,   109 

Fed.  317-1901   (C.  C.  S.  D.  N.  Y.) 311 

Lamb  v.  Evans,  3  Ch.  462-1892;  affd.,  1  Oh.  218-1893,  62  L.  J.  Ch.  404.  .431,  435 
Lamb  Knit   Goods   Co.   v.   Lamb   Glove  &  Mitten   Co.,    120   Mich.    159-1899, 

78  N.  W.  1072,  44  L.  R.  A.  841 58,  219 

Lamont,  Corliss  &  Co.  v.  Hershey,  140  Fed.  703-4-1905   (C.  C.  N.  D.  Pa.)  .  .  .  54 

Lampert  v.  Judge  &  Dolph  Drug  Co.,  119  Mo.  App.  093-1900,  100  S.  W.  659.  460 

Landreth  v.  Landreth,  22  Fed.  41-1884   (C.  C.  Wis.) 139,  154 

Lane  v.  Brothers  and  Sisters  of  the  Evening  Star  Society,  120  Ga.  355-1904, 

47  S.  E.  951 20O 

La  Republique  Francaise  v.  Schulta,  102  Fed.  153-1900  (C.  C.  A.  2d  Cir.)  ...  509 
La   Societe   Anonyme   des   Anciens    Etablissements,    Panhard   et   Levassor    v. 

Panhard-Levassor  Motor  Co.,   18  R.  C.  P.  405-1901 215 

Lawrence  Mfg.    Co.   v.   Tennessee  Mfg.   Co.,    138   U.    S.   537-1890,   34   L.   ed. 

997,  11   Sup.  Ct.  396 44,  52,  53,  230,  255,  279,  288 

Lawrence  Mfg.  Co.  v.  Lowell  Hosiery  Mills,  129  Mass.  325-1880 280 

Lea  v.  Deakin,  Fed.  Cas.  8,154-1879 249 

Leahy,  Kelly  &  Leahy  v.  Glover,  10  R.  P.  C.  141-1891 475 

Leather  Cloth  Co.  v.  American  Leather.  Co.,  11  Jur.  N.  S.  513-1865,  4  De  G. 

J.  &  S.   137-1863;   affd.,  11   H.  L.  Cas.  523-1865.  ..  .21,  34,  121,  240,  400,  482 

489,  495 

Lee  v.  Haley,  L.  R.  5  Ch.  App.  €as.  155-1869 58,  84,  148,  182,  268 

Legal  Aid  Society  v.  Wage  Earners'  Legal  Aid  Assn.,  N.  Y.  L.  J.,  April  21, 

1908,  Dowling,  J 203 

Leggott  v.  Barrett,  15  Ch.  Div.  306-1880 Ill 

Leidersdorf  v.  Flint,  50  Wis.  400-1880,  7  N.  W.  252 75 

Le  Massena  v.  Storm,  62  App.  Div.  (N.  Y.)   150-1901,  70  N.  Y.  Supp.  882 396 

411,  413 
LePage  Co.  v.  Russian  Cement  Co.,  2  C.  C.  A.  555,  51   Fed.  941-1892,   17 

L.  R.  A.  354 108,  275,  295,  472 

Lepow  v.  Kottler,  115  App.  Div.  (N.  Y.)  231-1906,  100  N.  Y.  Supp.  779 118 

Leschen  &  Sons  Rope  Co.  v.  Broderick  &  Bascom  Rope  Co.,  201  U.  S.   166- 

1906,  30  L.  ed.  710,  26  Sup.  Ct.  425,  aff'g  134  Fed.  571-1904,  67  C.  C.  A. 

418 304,  442 

Lever  v.  Goodwin,  36  Ch.  Div.  1-1887 471,  473 

Levy  v.  Walker,  L.  R.  10  Ch.  Div.  436-1879 35,  183 

Lewis  v.  Langdon,  7   Simons  421-1835 119 

Liebig's  Extract  of  Meat  Co.  v.  Chemists  Co-operative  Society,   13  R.  P.  C. 

736-38 72 

Liebig's   Extract  of  Meat   Co.,   Ltd.    v.   Libby,   McNeill   &    Libby,    103    Fed. 

87-1900  (C.  C.  N.  D.  111.) 145,  341 


Table  of  Cases.  xxxiii 

PAGF. 

Liebig  Extract  of  Meat  Co.,  Ltd.  v.  Walker,  115  Fed.  822-1902 144 

Life  Association  of  America  v.  Boogher,  3  Mo.  App.  173-1876 400 

Liggett  &  Myer  Tobacco  Co.  v.  Hynes,  20  Fed.  883-1S84  (D.  C.  Ark.) 468 

Link  v.  Architectural  Iron  Works,  24  111.  551-1860 217 

Linoleum  Manufacturing  Co.  v.  Nairn,  7  Ch.  Div.  834-1S78 176 

Lippman  v.  Martin,  5  Ohio  N.  P.  120,  8  Ohio  Dec.  485-1898 184 

Listman  Mill  Co.  v.  Wm.  Listman  Milling  Co.,  88  Wis.  334-1894,  60  N.  W. 

261 99,  120 

Little  v.  Gallus  et  al.,  4  App.  Div.   (N.  Y.)   569-74-1896,  38  N.  Y.  Supp.  487.  431 

Little  v.  Kellam,  100  Fed.  353-1900  (C.  C.  N.  D.  N.  Y.) 271 

London  &  Northern  Bank  v.  Newnes,  16  Times  L.  R.  76-1899 417 

London  Guarantee,  etc.,  Co.  v.  Horn.  206  111.  493-1906 376 

Loog  v.  Bean,  L.  R.  26  Ch.  Div.  306-1884 402,  403 

Lorillard  Co.  v.  Peper,  86  Fed.  956-1898   (C.  C.  A.  8th  Cir.) 72,  161 

Lorillard  v.  Wight,  15  Fed.  383-1883    ( C.  C.  Md.) 320 

Low  v.  Fels,  35  Fed.  361-1SSS   (C.  C.  E.  D.  Pa.) 510 

Ludington  Novelty  Co.  v.  Leonard,  127  Fed.  155-1903    (C.  C.  A.  2d  Cir.)  ...  462 

Lumley  v.  Gye,  2  E.  &  B.  216-1853 352,  360,  361,  362,  364,  366 

Lynn,    W.    R.,    Shoe  Co.    v.   Auburn-Lynn    Shoe    Co.,    100   Me.    461,    69   Atl. 

569-1907 461 

M. 

Mack  v.  Petter,  L.  R.  14  Eq.  431-33-1 S72 195 

MacMahan   Pharmacal    Co.  v.   Denver   Chemical  Mfg.  Co.,   113    Fed.   468-74, 

51  C.  C.  A.  302-1901 104 

Magee  Furnace  Co.  v.  Le  Baron,  127  Mass.  115-1879 295 

Magnolia  Metal  Co.  v.  Tandem  Smelting  Syndicate,  Ltd.,   15  R.  P.  C.  701- 

189S 267 

Mahler  v.  Sanche,  223  111.  136-1906,  79  N.  E.  9,  revg.  121  111.  App.  247 423 

Manhattan  Medicine  Co.  v.  Wood,  108  U.  S.  218-1882,  27  L.  ed.  706,  2  Sup. 

Ct.  436    247,  482,  48S,  49f> 

Manufacturing  Co.  v.  Trainer,  101  U.  S.  55,  25  L.  ed.  993 279,  446 

Mappin  &  Webb,  Ltd.  v.  Leapman.  22  R.  P.  C.  398-1905   (Ch.  Div.) 93 

Marcus  Ward  v.  Ward,  40  N.  Y.  St.  Rep.  792,  15  N.  Y.  Supp.  913 279 

Marks  v.  Jaffa,  6  Misc.   (N.  Y.)   290-1893,  26  N.  Y.  Supp.  908 38 

Marlin  Fire  Arms  Co.  v.  Shields,   171   N.  Y.  384-1902,  64  N.  E.   163.  59  L. 

R.  A.  310 401,  405,  411.  412 

Marsh  v.  Billings,  7  Cush.  322-1851,  61  Mass.  322-1851 179,   187,  3S5 

Marshall  v.  Pinbham,  52  Wis.  572-1881,  9  N.  W.  615 123,  160 

Marshall  v.  Ross,  L.  R.  8  Eq.  651-1869 496 

Martens  v.  Reilly,  109  Wis.  464-1901,  84  N.  W.  840 

Martin  v.  Nutkin,  2  P.  Wins.  266-1724 40 

Martin  v.  Wright,  6  Sim.  297-1S33 398 

Marvel  Co.  v.  Fuller  Co.,  125  Fed.  829-1903    (C.  C.  N.  Y.) 285 

Marvel  Co.  v.  Pearl,  133  Fed.  160-1904   (C.  C.  A.  2d  Cir.) 79,  262 

Marx  &  H.  J.  Clothing  Co.  v.  Watson,  168  Mo.  133-1901,  67  S.  W.  391,  56 

L.  R.  A.  951 406 

Massachusetts  &  Baltimore  Car  Wheel  Co.  v.  Bemis,  29  Fed.  95-1886   (C.  C. 

Mass.) '. 402 

Massam  v.  Thorley's  Cattle  Food  Co.,  14  Ch.  Div.  748-1880 128,  212 

Matsell  v.  Flanagan,  2  Abb.  Pr.  N.  S.   (N.  Y.)   459-1867 58,  192,  207,  444 


xxxiv  Table  of  Cases. 

PAGK. 

Manger  v.  Diek,  53  Hew.  Pr.  132-1878 400,  413 

Maxwell  v.  Hogg,  L.  R.  2  Ch.  App.  307-1867 196,  400 

May  v.  Thompson,  20  Oh.  Div.  718 91 

May  v.  Wood,  172  Mass.  11-1898,  51  X.  E.  191 359 

Mayer  v.   Journeymen  Stonecutters'   Assn.,   47  N.   J.   Eq.   519-1890,  20  Atl. 

492 413 

Mayor  of  Bradford  v.  Pickles,  64  L.  J.  Ch.  101-1895 355 

McAndrew  v.  Bassett,  4  De  G.  J.  &  S.  380-1864 56,  236 

McBride  v.  O'Neal,  128  Ga.  473-1907,  57  S.  E.  789,  Miss.  Code  1892,  §  1068.  364 

McCann  v.  Anthony,  21  Mo.  App.  83-1886 47,  57,  344 

McCann  v.  Wolff,  28  Mo.  App.  447-1888 359 

McCardel  v.  Peck,  28  How.  Pr.   (N.  Y.)    120-1864 508 

McCartney  v.  Garnhart,  45  Mo.  593-1870 277 

McCaw,  .Stevenson  &  Orr,  Ltd.  v.  Lee  Bros.,  23  R.  P.  C.  1-1905  (Ch.  Div.)  .  .  505 
McFell  Electric  &  Telephone  Co.  v.  McFell  Electric  Co.,   110  111.  App.   182- 

85-1903 109,  184 

McKillopp  v.  Taylor,  25  X.  J.  Eq.  139-1874 40 

MeLx-an  v.  Fleming,  96  U.  S.  245-1877,  24  L.  ed.  828 32,  36,  51,  52,  62,  6S 

71,  73,  75,  98,   127,  268 

McVey  v.  Brendel  144  Pa.  St.  235T1891,  22  Atl.  912,  13  L.  R.  A.  377 478 

.Mead  v.  Stirling,  62  Conn.  586-1892,  27  Atl.  591,  23  L.  R.  A.  227 40 

Mela.chrino,  M.,  &  Co.  v.  Melachrino  Egyptian  'Cigarette  Co.,  4  R.  P.  C.  215- 

1887 176 

Meldrum  v.  Shubert,  2  111.  Cir.  Ct.  Rep.  293-1904 57 

Memphis   Keeley   Institute  v.  Leslie   E.  Keeley   Co.,   155   Fed.   964-1907    (C. 

C.  A.) 481 

Meneely  v.  Meneely,  62  X.  Y.  427-1875 130,  183 

Menendez  v.  Holt,  128  U.  S.  514-1888,  32  L.  ed.  526,  9  Sup.  Ct,  143 92,  120 

507,  516 

Merchant  Banking  Co.  v.  Merchants'  Joint  Stock  Bank,  9  Ch.  Div.  560-1878 .  .  224 
Merchants'    Detective    Assn.    v.    Detective    Mercantile    Agency,    25    111.    App. 

250-1888 184,  198,  204 

Merriam  v.   Famous   Shoe   &   Clothing   Co.,   47   Fed.   411-1891    (C.   C.  E.   D. 

Mo. ) 302 

Merriam,   G.  &   C,   Co.  v.   Ogilvie,   159   Fed.   038-1908    (C.  €.   A.    1st   Cir.), 

modifying  149  Fed.  858 302 

Merriam,  G.  &  C,  Co.  v.  Straus.  130  Fed.  477-1904   (C.  C.  S.  D.  X.  Y.) 195 

Merriam  v.  Texas  Sif tings  Pub.  Co.,  49  Fed.  944-1892   (C.  C.  S.  D.  X.  Y.) 302 

Merry  v.  Hoopes,  111  X.  Y.  415-1888,  18  X.  E.  714 99,   117,  120 

Merryweather  v  Moore,  2  Ch.  518-1892 429 

Messerole  v.  Tynberg,  4  Abb.  Pr.  X.  S.  410-1868 253 

Metcalfe  v.  Brand,  86  Ky.  331-1887.  5  S.  W.  773 256 

Metropolitan  Xat.   Bank   v.   St.   Louis   Dispatch   Co.,   36   Fed.   722-1888    (C. 

C.  Mo.) 89 

Metzler  v.  Wood,  8  Ch.  Div.  606-1878 194 

Meyer  v.  Dr.  Bull  Vegetable  Medicine  Co..  58   Fed.  884-1893    (C.  C.  A.  7th 

Cir.)   78,  451 

Michigan  Condensed  Milk  Co.  v.  Kennewe.o-  Co.,  30  App.  D.  C.  491 504 

Miles,  Dr.,  Medical  Co.  v.  Piatt,  142  Fed.  606-1906 420 


Table  of  Cases.  xxxv 

PAGE1. 

Miller,  The  Mrs.  G.  B.,  &  Co.  Tobacco  M'f'y  v.  Commerce,  45  N.  J.  L.  18- 

1883 43,  51,  270 

Millington  v.  Fox,  3  Myl.  &  Cr.  388-1838 15,  22,  31.  45,  46,  47,  48,   176 

Miskell  v.  Prokop,  53  Neb.  62S-1S99,  79  N.  W.  522 86 

Mitchel  v.  Reynolds,  1  P.  Wins.  181;   1   Smith  Lead.  Cas.  Pt.  II  508 423 

Mitchell  v.  Henry,  15  Ch.  Div.  181-1880 7,  469 

Mitchell  v.  Williams,  106  Fed.  168-1901   (C.  C.  A.  7th  Cir.) 452 

Mogul  SS.  Co.  v.  McGregor,  Gow  &  Co.,  L.  R.  23  Q.  B.  598-1889.  .26,  348,  359,  360 

Moller  v.  Lambert,  2  Campb.  548 1S8 

Monopol   Tobacco   Works   v.   Gensior,   32   Misc.    (N.   Y.)    87-1900,   66   N.   Y. 

Supp.    155 308 

Montgomery  v.  Thompson,  ( 1891 )  A.  C.  217,  64  L.  T.  R.  748 138 

Moore  v.  Ra.wson,  185  Mass.  264-1904 118 

Moore,  Benjamin,  &  Co.  v.  Anwell,  158  Fed.  1908    (€.  C.  N.  Y.) 446 

Moorman  v.  Hoge,  2  Sawy.  78-1871   ( C.  C.  Cal.) 82 

Morgan  v.  Andrews,  107  Mich.  33 361 

Moran  v.  Dunphy,  177  Mass.  485   361,  364,  376 

Morasse  v.  Brocher,   151  Mass.  567 364 

Morgan's,  Enoch,  Sons  Co.  v.  Edler,  Cox's  Manual  714-1890 273. 

Morgan's  Sons  Co.  v.  Troxell   (rev'g  23  Hun,  632-1S81),  89  N.  Y.  292-1882, 

42  Am.   Rep.  294 75,  312 

Morgan's  Sons  Co.  v.  Troxell,  23  Hun   (N.  Y.),  632-1881 76; 

Morgan's  Sons,  Enoch,  Co.  v.  Whittier-Coburn  Co.,  118  Fed.  657-1902   (C.  C. 

N.  D.   Cal.) 339,  472 

Morison  v.  Moat,  20  L.  J.  ST.  IS.  Ch.  513-1851,  affirmed  on  appeal.  21  L.  J.  X.  S. 

Ch.  248,  9  Hare  241-1851   420,  422,  428,  429 

Morrall.  Abel,  Ltd.  v.  Hessin  &  Co.,  20  R.  P.  C.  429-1903   (Ct.  App.) 93 

Morse  v.  Hall,  109  Mass.  409 444 

Morton  v.  Morton,  148  Cal.  142-1905.  82  Pac.  664,  1  L.  R.  A.  N.  S.  660n 140 

Mossier  v.  Jaeobs,  66  111.  App.  571-1896 86,  273,  478 

Mouson  &  Co.  v.  Boehm,  L.  R.  26  Ch.  Div.  398-1884 504 

Moxie  Nerve  Food  Co.  v.  Baumbach,  32  Fed.  205-1887   (C.  C.  E.  D.  Tex.)  .  .  .    339  . 

Moxie  Nerve  Food  Co.  v.  Holland,  141  Fed.  202-1905   (C.  C.  R.  I.) 487,  502 

Moxie  Nerve  Food  Co.  v.  Modox  Co.,  152  Fed.  493-1907    (C.  C.  R.  L),  153 

Fed.  487-1907    (C.  C.  R.  I.) 478,  479,  485,  486 

Moxley  Co.  v.  Braun  &  Fitts  Co.,  93  111.  App.  1S3-1900 343,     499 

Mueller  Mfg.  Co.  v.  McDonald  &  M         on  Mfg.  Co.,  164  Fed.  1001-1909.. 286,  318 

Mulkern  v.  Ward,  L.  R.  13  Eq.  619-1872 393,  399 

Mumm  v.  Kirk,  40  Fed.  589-1889   (C.  C.  S.  D.  N.  Y.) 310 

Munro  v.  Tousey,  129  N.  Y.  38-1891,  29  N.  E.  9,  14  L.  R.  A.  245n 72,  189 

Murray  v.  Gast  Lithographic  Co.,  8  Misc.    (N.  Y.)    36-1894,  2S  N.  Y.  Supp. 

281 38 

Myers  v.  Kalamazoo  Buggy  Co.,  54  Mich.  215,   10  N.  W.  545,  52  Am.  Rep. 

811 98,   114 

Myers  v.  Theller,  38  Fed.  607-1889   (C.  C.  S.  D.  N.  Y.) 340 

N. 
Nashville,  C.  &  St.  L.  Ry.  Co.  v.  McConnell,  82  Fed.  65-1897   (€.  C.  Tenn.)  .  .   368 
Nathan  Manufacturing  Co.  v.  H.  A.  Rogers  Co.,  N.  Y.  Law  Jour.,  February 
27,    1909 292-301 


xxxvi  Table  of  Cases. 

PAGE. 

National  Folding  Box  and  Paper  Co.  v.  National  Folding  Box  Co.,  43  Wkly. 

Repr.  156 225 

National  Gum  &  Mica  Co.  v.  Braendly,  27  App.  Div.   (N.  Y.)   219,  51  N.  Y. 

Supp.  93 430 

National  Phonograph  Co.,  Ltd.  v.  Edison  Bell,  etc.,  Co.,  1  Ch.  335-1908.  .361,  378 
National  Phonograph  Co.,  Ltd.  v.  Edison-Bell  Consol'd  Phonograph  Co.,  Ltd., 

24  T.  L.  R.  201-1907 378 

National  Telegraph  News  Co.  v.  Western  Union  Telegraph  Co.,  119  Fed.  294- 

1902   ( C.  C.  A.  7th  Cir. ) ,  60  L.  R.  A.  805 366 

National  Starch  Mfg.  Co.  v.  Duryea,  101  Fed.  117-1900  (C.  C.  A.  2d  Cir.)  . .    155 

National  Starch  Co.  v.  Koster,  146  Fed.  259 448 

Nesne  v.  Sundet,  101  N.  W.  490-1904,  93  Minn.  299 56,  174,  21(5 

Neth  v.  Ohmer,  30  App.  D.  C.  478-1908 433 

Newark  Coal  Co.  v.  Spangler,  54  N.  J.  Eq.  354-1896,  34  Atl.  932 183 

Newbro  v.  Undeland,  69  Neb.  821-1903,  96  N.  W.  635 487 

Newby  v.  Oregon  Cent.  Ry.  Co.,  1  Deady  609-1869,  Fed.  Cas.  No.  10,144.  .50, 

58,  199,  204,  217 
New  England  Awl  &  Needle   Co.   v.  Marlborough  Awl   &  Needle  Co.,    168 

Mass.  154-1897,  46  N.  E.  386 56,  66,  82,  311 

Newman  v.  Alvord,  49  Barb.  588-1867 ;  affd.,  51  N.  Y.  189-1872. ..  .241,  253,  257 

Newman  v.  Pinto,  4  R.  P.  C.  508-1887   ( Ct.  App.) 489 

N.  Y.  Asb.  Mfg.  Co.  v'.  Ambler,  etc.,  Co.,  102  Fed.  890 447 

N.  Y.  Asbestos  Mfg.  Co.  v.  Ambler  Asb.  Air-Cell  Cov'g  Co.,  99  Fed.  85 447 

N.  Y.  Cab  Co.  v.  Mooney,  15  W.  N.  Cases,  152-1884 329 

N.  Y.  C.  &  H.  R.  R.  Co.  v.  Reeves,  85  N.  Y.  Supp  28-1903 368 

New  York  Filter  Co.  v.  Schwarzwalder,  58  Fed.  579 407 

New  York  &  Rosendale  Cement  Co.  v.  Coplay  Cement  Co.,  44  Fed.  277-1890 

(C.  C.  A.),  10  L.  R.  A.  833,  45  Fed.  212-1891 52,  22S,  229 

Nicholson,  J.  &  W.,  &  Co.  v.  Buchanan,  19  R.  P.  C.  321-1900 103,  173,  178 

Noel  v.  Ellis,  89  Fed.  978-1896   (C.  C.  S.  D.  Iowa) 270 

Nokes  v.  Mueller,  72  111.  App.  431 32S 

Nolin  v.  Pearson,  191  Mass.  283-1906 361 

Nordenfelt  v.  The  MaximNordenfelt  Guns  &  Ammunition  Co.    (1894)   App. 

Cas.  535 96 

North   Cheshire   &  Manchester  Brewery  Co.,  The,  Ltd.  v.   The  Manchester 

Brewery  Co.,  Ltd.,  App.  Cas.  83-1899 49,  212 

Northcutt  v.  Turney,  101  Ky.  314 444,  509 

Noice  v.  Brown,  39  N.  J.  569 366 

O. 

Oakes  v.  Tonsmierre,  4  Woods  547-1 8S3   ( C.  C.  Ala.) 98 

O'Grady  v.  McDonald,  —  N.  :J.  Eq.  — ,  66  Atl.  175-1907 180 

Ohio  Baking  Co.  v.  National  Biscuit  Co.,   127   Fed.   116-1904    (C.  C.  A.  6th 

Cir.) 335 

Omega  Oil  Co.  v.  Weschler,  35  Misc.   (N.  Y.)   441-1901 24 

Oppermann  v.  Waterman,  94  Wis.  583-1896,  69  N.  W.  569 339 

Original   La   Tosca   Social   Club   v.   La  Tosca    Social    Club,   23   App.    D.    C. 

96-1904 223 

Orr,  Ewing  &  Co.  v.  Johnston  &  Co.,  L.  R.  13  Ch.  Div.  434-18S0 58,  75 

Ottoman  Cahvey  Co.  v.  Dane,  95  111.  203-1880. 202 


Table  of  Cases.  xxxvii 

P.  PAGE. 

Packham  &  Co.,  Ltd.  v.  Sturgess  &  Co.,  15  R.  P.  C.  669-1898 342 

Paine  &  Co.  v.  Daniell  &  Sons'  Breweries,  Ltd.,  10  R.  P.  C.  71-1893 266 

Palmer  v.  De  Witt,  47  N.  Y.  532-1872 419 

Palmer  v.  Harris,   60  Pa.  St.   156-1869 30,  489 

Paris  Medicine  Co.  v.  W.  H.  Hill  Co.,  102  Fed.  148-1900  (C.  C.  A.  6th  Cir.)  . .   485 

486 
Park,  John  D.,  &  Sons  Co.  v.  Hartman,  153  Fed.  24-1907   (C.  C.  A.  6th  Cir.), 

12  L.  R.  A.  N.  S.  135,  note 123,  380,  382,  383,  422,  424  839 

Parkland  Hills  Blue  Lick  Water  Co.  v.  Hawkins,  95  Ky.  502-1894,  26  S.  W. 

389 239 

Parlett  v.  Guggenheimer,  67  Md.  542-1887,  10  Atl.  81 337 

Parsons  Bros.  &  Co.  v.  Gillespie  &  Co.,  15  R.  P.  C.  57-1897 263 

Partridge  v.  Menck,  2  .Sandf.  Ch.  (N.  Y. )  622-1845 183 

Pasley  v.  Freeman,  3  Term  Rep.  51-1789 371 

Payton  &  Co.  v.  Snelling,  Lampard  &  Co.,  App.  Cas.  308-1901 58,     71 

Payton  &  Co.  v.  Snelling,  Lampard  &  Co.,  Ltd.,  17  R.  P.  C.  48-53-1900 314 

Peabody  v.  Norfolk,  98  Mass.  452-1867,  96  Am.  Dec.  664 419,  420,  422,  425 

Pearce  v.  Crutchfield,  14  Ves.  Jr.  206-1807 38 

Pearson  v.  Pearson,  L.  R.  27  Ch.  Div.  145-1884 Ill,  113 

Peck  Bros.  &  Co.  v.  Peck  Bros.  Co.,  113  Fed.  291-1902    (C.  C.  A.  7th  Cir.), 

51  C.  C.  A.  251,  62  L.  R.  A.  81 99,  108,  199,  221 

Penberthy  Injector  Co  v.  Lee,  120  Mich.  174-1899,  78  N.  W.  1074.  .  .218,  220,  456 

Penn.  R.  Co.  v.  Beekman,  30  Wash.   (D.  C.)   Law  Rep.  715-1902 308 

Pennsylvania  Iron  Works  Co.  v.  Henry  Voght  Machine  Co.,  29  Ky.  L.  Rep. 

861-1900,  96  S.  W.  551,  6  L.  R.  A.  N.  S.  1023 412 

Pennsylvania  Salt  Mfg.  Co.  v.  Myers,  79  Fed.  87-1897   (C.  C.  E.  D.  Mo.) 321 

People  v.   Sheldon,    139  N.   Y.  251 347 

People's  Gas  Co.  v.  Tyner,  131  Ind.  277-1891,  31  N.  E.  59,  16  L.  R.  A.  443.  .      40 

Perkins  v.  Pendleton,  90  Me.   166 376 

Perkins  Electric  Lamp  Co.  v.  Hood,  44  111.  App.  449-1892 217 

Perry  v.  Truefitt,  6  Beav.  66-1842 25,  484 

Pettes  v.  American  Watchman's  Clock  Co.,  89  App.  Div.    (N.  Y.)    345-1903, 

85  N.  Y.  Supp.  900 216 

Pfeiffer  v.  Wilde,   107   Fed.  456 448 

Phalon  &  Son  v.  Wright,  5  Phila.  464-1864 485 

Philadelphia  Novelty  Co.  v.  Blakesley  Novelty  Co.,  37  Fed.  305-1889    (C.  C. 

Conn.) 317 

Philadelphia  Novelty   Mfg.    Co.   v.    Rouss,   40    Fed.    585-1889    (C.  C.    S.   D. 

N.  Y.) 82,  310,  345 

Pidding  v.  How,  8  Sim.  477-H837 482,  484 

Pierce  v.  Franks,  15  L.  J.  Ch.  N.  S.  122-1846 188 

Pierce  v.  Guittard,  68  Oal.  68-1885,  8  Pac.  645 268,  276 

Pike,  A.  F.,  Mfg.  Co.  v.  Cleveland  Stone  Co.,  35  Fed.  896-1888 241 

Pillsbury  v.  Pillsbury-Washburn  Flour  Mills  Co.,  64  Fed.  841-1894    (C.  C. 

A.   7th  Cir. ) 147,  468 

Pillsbury-Washburn    Flour  Mills   Co.,   Ltd.   v.   Eagle,   86    Fed.    608-1898,   30 

C.  C.  A.  380,  41  L.  R.  A.  162,  revg.  82  Fed.  816-1'897 229,  237,  252,  257 

Pinet,  F.,  et  Cie  v.  Madison  Louis  Pinet,  Ltd.,  15  R.  P.  C.  65-1S97;  see  also 

s.  c.  14  R.  P.  C.  933-L897 139,  153 

Plant  v.  Woods,  176  Mass.  492-1900,  57  N.  E.  1011,  51  L.  R.  A.  339 364,  371 


xxxviii  Table  of  Cases. 

PAGE. 

Plant  Seed  Co.  v.  Michel  Plant  &  Seed  Co.,  37  Mo.  App.  313-1889 217,  277 

Follard  v.  Photographic  Co.,  40  Ch.  Div.  345-1889 223,  419 

Popham  v.  Cole,  66  N.  Y.  69-1876,  23  Am.  Rep.  22 75 

Postal  Tel.  Cable  Co.  v.  Netter,   102  Fed.  691 447 

Postum  Cereal  Co.  v.  American  Health  Food  Co.,  119  Fed.  848-1902    (C.  C. 

A.  7th  Cir.),  56  C.  C.  A.  360 62,  272,  341 

Potter  v.  McPherson,  21  Hun   (  X.  Y. )   559-1880 194,  272 

Potter  Drug  &  Chemical  Corp.  v.  Pasfield  Soap  Co.,  102  Fed.  490-1900,  affd.  273 
Powell  v.  Birmingham  Vinegar  Brewery  Co.,  2  Ch.  54-1896,  L.  R.  App.  Caa. 

710-1S97 32,  143,  170,  176,  334,  470,  515 

Pratt's  Appeal,   117  Pa.  St.  401-1888,  11  Atl.  878 49,  50 

Preservaline   Mfg.    Co.    v.    Heller    Chemical    Co.,    118    Fed.    103-1902    (C.   C. 

111.) 495 

Prince  Albert  v.  Strange,  1  Hall  &  T.  1-1849,  p.  24 434 

Prince  Mfg.  Co.  v.  Prince's  Metallic  Paint  Co.,  135  N.  Y.  24-LS92,  31  N.  E. 

990,  17  L.  R.  A.  129   467,  482 

Prince's  Metallic  Paint  Co.  v.  Prince  Mfg.  Co.,  57   Fed.  938-1893    (C.  C.  A. 

3d  Cir.)    516 

Prince  de  Wagram  v.  Marais'  'Cour  de  Paris,  Dec.  2,  1871,  Dalloz,  2,  185.  .  .  .  352 

Probasco  v.  Bouyon,  1  Mo.  App.  241-1876 98 

Proctor  &  Gamble  Co.  v.  Globe  Refining  Co.,  92  Fed.  357-1899  (C.  C.  A.  6th 

Cir.)   331,  341 

Prudential  Assurance  Co.  v.  Knott,  L.  R.  10  Ch.  App.  Cas.  142-1875 38,  393 

400,  403 

Punch  v.  Boyd,  L.  R.  Ir.  16  Q.  B.  D.  476-1885 417 

Punnett,  Ex  parte,  16  Ch.  Div.  226-1880 90 

Putnam  Nail  Co.  v.  Bennett,  43  Fed.  800-1890 52,  255,  288,  289 

Putnam  Nail  Co.  v.  Dulaney,  140  Pa.  St.  205-1891,  21  Atl.  391,  11  L.  R.  A. 

524 288 

Q. 
Quinn  v.  Leathern,  App.  Cas.  495-1901 353,  360,  361,  362,  376,  377,  379 

R. 

Radam  v.  Capital  Microbe  Destroyer  Co.,  81  Tex.  122-1S91,  16  S.  W.  990. ...  345 

Rains  &  Sons  v.  White,  Haucke  &  Co.,  107  Ky.  114-1899,  52  S.  W.  970 337 

Randall  v.  British  &  American  Shoe  Co.,  19  R.  P.  C.  393-1902 80 

Ransome  v.  Bentall,  3  L.  J.  Ch.  N.  S.  101 280 

Rapp  v.  Over,  3  Brewst.    (Pa.)    133-1869 115 

Raymond  v.  Royal  Baking  Powder  Co.,  29  C.  C.  A.    (7th  Cir.)    245-1898,  85 

Fed.   231    505 

Raymond  v.  Russell,  143  Mass.  295-1S87,  9  N.  E.  544 397 

Raymond  v.  Yarrington,   73   S.   W.   S00,  021  L.  R.  A.   962,   96  Tex.  443-1903, 

96  Tex.  400   361,  374 

Read  Brothers  v.  Richardson  &  Co.,  45  L.  T.  N.  S.  54-1881    (Ct.  App.)  ....  75 

258,  471 

Reddaway  v.  Banham,  App.  Cas.   199-1896 25,   166,  169 

Reed,  Dr.  A.,  Cushion  Shoe  Co.  v.  Frew,  15S  Fed.  552-1908   (C.  C.  N.  Y.)  .  .  510 

Regent  Shoe  Mfg.  Co.  v.  Haaker,  75  Nebr.  426,  106  N.  W.  595-190-6 4!)1 

Regis  v.  Jaynes  &  Co.,  185  Mass.  45S-1904,  70  N.  E.  480 270 


Table  of  Cases.  xxxix 

PAGE. 

Regis  v.  Jaynes  &  Co.,  191  Mass.  245 457 

Renft  v.  Reimer,  200  111.  3S6-1902,  05  N.  E.  720 114 

Revere  Rubber  Co.  v.  Consolidated  Hoof  Pad  Co.,  139  Fed.  151-1905   (C.  C. 

S.  D.  N.  Y. )    2G2 

R.  T.  Reynolds  Tobacco  Co.  v.  Allen  Bros.  Tobacco  Co.,   151   Fed.  819-1907 

(C.  C.  Va.) 321,  474 

Rice  v.  Albee,  164  Mass.  88,  41  N.  E.  122   371 

Rice  v.  Manley,  66  N.  Y.  82-1876 352,  362,  370,  375 

Rice^Stix  &  Co.  v.  J.  A.  Scriven  Co,  165  Fed.  639-1908 299 

Rich  v.  N.  Y.  C.  &  H.  R.  R.  Co.,  87  N.  Y.  392-1882 375 

Richards  v.  Williamson    298 

Richmond  Nervine  Co.  v.  Richmond,   159  U.  S.  293-1895,  40  L.  ed.   155,   16 

Sup.  Ct.  30    105,  108 

Richter  v.  Reynolds,  59  Fed.  577-1S93    (C.  C.  A.  3d  Cir.)    11 

Rickerby  v.  Reay,  20  R.  P.  C.  380-1903   (Ch.  Div.)    89,  100 

Ripley  v.  Griffiths.  19  R.  P.  C.  591-1902 169 

Robb  v.  Green,  2  Q.  B.  D.  315-1895.    And  see  2  Q.  B.  D.  1 439 

Roberson  v.  Rochester  Folding  Box  Co..  171   N.  Y.  538-1902,  64  N.  E.  442, 

59  L.  R.  A.  47S   39 

Roberts  v.  McKee,  29  Ga.  161-1859 440 

Robertson  v.  Berry  &  Co.,  50  Md.  591-1878 32,  189 

Robinson  v.  Storm,  103  Term.  40-1899,  52  S.  W.  880 158 

Robinson  v.  Texas  Pine  Lands  Assn.,  40  S.  W.  843-1897   (C.  C.  A.  Tex.)  ....  385 

Rodgers  v.  Nowill,  6  Hare,  325-1846,  3  De  G.  M.  &  G.  614-1853 127,  514 

Rogers,  R.  W.,  Co.  v.  Wm.  Rogers  Mfg.  Co.,  17  C.  C.  A.  576,  70  Fed.  1017- 

1895 108,  210,  217 

Rogers,  Wm.  A.  v.  International  Silver  Co.,  30  App.  Ca.s.  (D.  C.)   97-1908...  7 

Rogers,  William  G.,  Co.  v.  International  Silver  Co.,  118  Fed.  133 444 

Rogers,  William,  Mfg.  Co.  v.  Rogers  M.fg.  Co.,  16  Phila.  178   (Com.  PI.  Phila. 

1883)   134,  146 

Rollins  v.  Hinks,  L.  R.  13  Eq.  355-1872 399 

Rose  Hill  Race  Course  Company,  The,  In  re,  5  St.  Reps.  New  South  Wales, 

402-1905 94 

Routh  v.   Webster,   10  Beav.  561-1S47 38,  391,  400 

Rowland  v.  Michell,  14  R.  P.  C.  37-1896    (reported  in  Ch.  Div.  13  R.  P.  C. 

457 )   273 

Rowley  v.  Houghton,  2  Brewst.   (Pa. )   303-1868 273 

Rowley,  J.  F.,  Co.  v.  Rowley,  154  Fed.  744-1907  (C.  C.  Pa.),  modified  161  Fed. 

94 140 

Royal  Baking  Powder  Co.  v.  Davis,  26  Fed.  293-li8S5   (C.  €.  E.  D.  Mich.)  .  .  333 

Royal  Baking  Powder  Co.  v.  Royal,  122  Fed.  337-1903,  58  C.  C.  A.  499-506.  .  131 

Roycroft  v.  Tayntor,  68  Vt.  219 376 

Rubel  v.  Allegretti  Chocolate  Oream  Co.,  76  111.  App.  581-1898 147 

Rugby  Portland  Cement  Co.,  Ltd.  v.  Rugby  &  N.  P.  C.  'Co.,  Ltd..  9  R.  P.  C. 

46-1891 231 

Rumford  Chemical  Works  v.  Muth,  1  L.  R.  A.  44-1888,  35  Fed.  524 273 

Rushmore  v.  Manhattan  Screw  &  Stamping  Works,  163  Fed.  939-1908   (C.  C. 

A.  2d  Cir.) 292 

Rushmore  v.  Saxon,  C.*C.  A.  2d  Cir.,  Nov.,  1908 80,  292,  448 

Rushmore,   Samuel   W.   v.  Manhattan   Screw   &   Stamping  WTorks    (C.   C.  A. 

July,  1908)   308 


xl  Table  of  Cases. 

PAGE. 

Russia  Cement  Co.  v.  Franenhar,  133  Fed.  518-1904   (C.  C.  A.) 324 

Russia  Cement  Co.  v.  Katzenstein,  109  Fed.  314-1901  (C.  C.  S.  D.  N.  Y.)  . .  .  324 
Russia  Cement  Co.  v.  LePage,  147  Mass.  206-1888,  17  X.  E.  304.... 97,  147,  158 
Rutter  &  Co.  v.  Smith,  18  R.  P.  C.  40-1901 475 

S. 

Salomon  v.  Hertz,  40  N.  J.  Eq.  400-1885.  2  Atl.  379 419,  434,  437 

Samuel  v.  Berger,  24  Barb.  163-1856   (X.  Y.  Sup.  Ct.) 97 

Samuel  Bros  &  Co.  v.  Hostetter  Co.,  55  C.  C.  A.  Ill,  118  Fed.  257 236,  487 

Samuels  v.  Spitzer,  177  Mass.  226-1900,  58  N.  E.  693 8(3 

Sanders  v.  Jacob,  20  Mo.  App.  96-1885 58 

Sanders  v.  (Jtt,  16  Mo.  App.  322-1884 253 

Sarrazin  v.  Irby  Cigar  &  Tobacco  Co.,  Ltd.,  35  C.   C.  A.  496,  93  Fed.   624- 

1899,  46  L.  R.  A.  541n 6,  108 

Sartor  v.  Schaden,  125  Iowa,  61)6-1904,   101  N.  W.  511... 3,   11,  37,  41,   174,  266 

497,  506 
Sawyer  Crystal  Blue  Co.  v.  Hubbard,  32  Fed.  388-1 8S7   (C.  C.  Mass.)  .  .  .327,  335 

Sawyer  v.  Kellogg,  7  Fed.  720-1881   (C.  C.  N.  J.) 333 

Saxby  v.  Easterbrook 390 

Saxlelmer  v.  Eisner  &  M.  Co.,  147  Fed.  189-1906   (C.  C.  A.  2d  Cir.),  affg.  140 

Fed.  93S-1905   ( C.  C.  S.  D.  X.  Y.-)    443,  446 

Saxlelmer  v.  Eisner  &  Mendelson  Co.,  88  Fed.  61-1898    (C.  C.  S.  D.  N.  Y.), 

138  Fed.  22-1905    (C.  C.  A.  2d  Cir.),  179  U.  S.  19-1900,  44  L.  ed.  60,  21 

Sup.  Ct.  7    ; 460,  461,  503,  509 

Saxlehner  v.  Xielson,  179  U.  S.  43-1900,  44  L.  ed.  77.  21  Sup.  Ct.  16 514 

Schenker  v.  Auerbach,  89  App.  Div.   (N.  Y.)   612 448 

Scheuer  v.  Muller,  74  Fed.  225-1896.  20  C.  C.  A.  161 6S 

Schmidt  v.  Brieg,  100  Cal.  672-1893,  35  Pac.  623.  22  L.  R.  A.  790 308,  508 

Schoenhofen,  Peter,  Brewing  Co.  v.  Maltine  Co.,  30  App.  Gas.    (D.  C.)    340- 

1908 4 

School  of  Magnetic  Healing  v.  McAnnulty,  187  U.  S.  94-1902,  23  Sup.  Ct.  33, 

47  L.  ed.  90   502 

Schuster  Co.  v.  Muller,  28  App.  Cas.    (D.  C.)   409-1906 487 

Schuyler  v.  Curtis,  147  N.  Y.  434-1895,  42  X.  E.  22,  31  L.  R.  A.  286 38 

Schweppes,  Ltd.  v.  Gibbens,  22  R.  P.  C.  601-1905 345 

Scidmore  v.  Smith,  13  Johns.   (X.  Y.)   322-1S16 363 

Scott  v.  Bay,  3  Md.  431-1S53 40 

Scott  v.  Thackery,  89  Cal.  258-62 513 

Scriven,  J.  A.,  Co.  v.  Chard  Co.,  140  Fed.  794-1905   (C.  C.  S.  D.  X.  Y.) 266 

Scriven,  J.  A.,  Co.  v.  Morris,  154  Fed.  914-1907;  affd.,  158  Fed.  1020 304 

Scriven  v.  North,   134  Fed.  366-1904    (C.  C.  A.  4th  Cir.),  67   C.  C.  A.  348, 

s.  c,  modifying  124  Fed.  894-1903   (C.  G.  Md. )  ...  10,  66,  299,  304,  465,  468,  472 

Seabury  v.  Grosvenor,   14  Blatchf.    (U.  S. )    262-1877 480 

Seeley  v.  Fisher,   11   Sim.  581-1841 391,  398,  399 

Seixo  v.  Provezende,  L.  R.  1  Ch.  App.  192-1865 170.  240,  317 

Selohow   v.   Chaffee   &   Selchow   Mfg.   Co.,    132    Fed.   996-1904    (C.   C.   S.    D. 

N.   Y.)      275 

Shaver  v.   Heller  &  Merz   Co.,   108    Fed.   821-1901    (C.   C.   A.   8th   Cir.),   65 

L.  R.  A.  878    26,  36,   106,  479 

Shaver  v.  Shaver,  54  Iowa,  208-1880,  6  X.  \V.  188 3,     98 

Shaw  v.  Pilling,  175  Pa.  St.  78-L896 293 


Table  of  Cases.  xli 

PAGE. 

Shaw  Stocking  Co.  v.  Mack,  21  Blatchf.  1-1882  (C.  C.  X.  Y.) 281 

Shelley  v.  Westbrooke,  Jac.  266-1821 38 

Shepard  v.  Stuart,  Am.  T.  M.  Cas.  (Price  &  S.  193,  1  B.  Phil.  117)    468 

Shepherd  v.  Wakeman,  1  Sid.  79   352 

Shepp  v.  Jones,  35  Wkly.  Notes  Cas.   (Pa.)   29-1892 287 

Sherwood  v.  Andrews,  5  Am.  L.  R.  N.  S.  588-1866 247,  489 

Shoemaker  v.   South  Bend  Spark  Arrester  Co.,  135  Ind.  471-1S93,  35  N.  E. 

280,  22  L.  R.  A.  332   407 

Shonk  Tin  Printing  Co.  v.  Shonk,  138  111.  34-1891,  27  N.  E.  529 436 

Siegert  v.  Abbott,  61  Md.  276-1883    482,  489 

Siegert  v.  Eiseman,  157  Fed.  314-1907   (C.  C.  N.  Y.)    462 

Seigert  v.  Findlater,  7  Ch.  Div.  801-1878 170 

Siegert  v.  Gandolfi,  149  Fed.  100-1906  (C.  C.  A.  2d  Cir.)    245,  487 

Silver  Spring  Co.  v.  Woolworth,  16  R.  I.  729-1886,  19  Atl.  528 434 

Simmonds  Medicine  Co.  v.  Mansfield  Drug  Co.,  93  Tenn.  84-1893,  23  S.  W. 

165 476,  497 

Simmons,  C.  F.,  Medicine  Co.  v.  Simmons,  81  Fed.  163-1897   (C.  C.  Ark.)  ..   317 

340,  438 
Singer  Machine  Manufacturers  v.  Wilson,  L.  R.  3  App.  Cas.  376-1877.  .  .  .31,     32 

46,  48,  468 

Singer  Mfg.  Co.  v.  Domestic  Sewing  Machine  Co.,  49  Ga.  70-1873 398,  413 

Singer  Mfg.  Co.  v.  June  Mfg.  Co.,  163  U.  S.  169-1895,  41  L.  ed.  116,  16  Sup. 

Ct.  1002 82,  144,  156,  303 

Singer   Mfg.    Co.    v.    Loog,    L.   R.    8    App.    Cas.    15-1882,    18    Ch.   Div.    395- 

1880 13-22,  28,  31,  467,  471 

Singleton  v.  Bolton,  3  Dougl.  293   14 

Skinner  v.  Oakes,  10  Mo.  App.  45-1881    101 

Slater  v.  Slater,  175  N.  Y.  143-1903,  67  N.  E.  224,  61  L.  R.  A.  796.  .119,  120,  121 

Smith  v.  David  H.  Brand  &  Co.,  67  N.  J.  Eq.  529-1904,  58  Atl.  1029 117 

Smith  v.  Everett,  27  Beav.  446-1859 119 

Smith  v.  Kernan  (Ohio),  5    Law  Bui.  145,  8  Ohio  Dec.  Reprint,  32 419 

Smith  v.  Smith,  3  Atk.  304-1745 38 

Smith  &  Davis  Mfg.  Co.  v.  Smith,  89  Fed.  486-1898   (C.  C.  N.  D.  111.) 279 

Snow  v.  Judson,  38  Barb.    (N.  Y. )    210-1S62 371,  401 

Snowden  v.  Noah,  1  Hopk.   (N.  Y.)   348-1825 192 

Snyder  Mfg.  Co.  v.  Snyder,  54  Ohio  St.  86-1896,  43  N.  E.  325,  31  L.  R.  A. 

657 99 

Social  Register  Assn.  v.  Howard,  60  Fed.  270-1894   (C.  C.  N.  J.) 195 

Social  Register  Assn.  v.  Murphy.  128  Fed.  116-1904   (C.  C.  R.  I.) 195 

Smithies  v.  National  Association  of  Operative  Plasterers,  1  K.  B.,  310-1909.   359 

376 
Societe  Anonyme,  etc.   v.  Western  Distilling   Co.,  43    Fed.   416-1S90    (C.   C. 

E.  D.  Mo. )    492 

Society  of  Accountants  and  Auditors  v.  Goodway   (1907,  Ch.  Div.)   76  L.  J. 

Ch.  384 173 

Soc.  of  Accts.  in  Edinb.  v.  Corp.  of  Accts.,  20  Ct.  Sess.  Cas.  750  (4th  ser.)  .  .  173 
Society   of   the   War   of    1812    v.   The  Society   of  the   War   of    1812   in   the 

State  of  New  York,  46  App.  Div.   (N.  Y.)  568-1900,  62  N.  Y.  Supp.  355.  .  .    203 

Sohier  v.  Johnson,  111  Mass.  238-1872   120 

Solis  Cigar  Co.  v.  Pozo,  16  Colo.  3SS-1891,  26  Pac.  556 342,  489,  497 

Soltau  v.  De  Held,  21  L.  J.  Ch.  N.  S.  153-1851 40 


xlii  Table  of  Cases. 

PAQF.. 

South  Wales  Miners'  Fed.  v.  Glamorgan,  App.  Cas.  239-1905. .  .351,  353,  356,  35<9 

369,  376 

Southern  v.  How,  Poph.  144 12 

Southern  White  Lead  Co.  v.  Cary,  25  Fed.  125-1885 242 

Sperry  &  Co.  v.  Percival  Milling  Co.,  81  Cal.  252-1889,  22  Pac.  651 270,  337 

Sperry   &   Hutchinson   Co.   v.   L.    Weber   &    Co.,    161    Fed.   219-1908    (C.    C. 

111. )   385,  475 

Sperry  &  Hutchinson  Co.  v.  Mechanics'  Clothing  iCo.,  153  Fed.  24-1907   (C.  C. 

A.  6th  Cir.),  12  L.  R.  A.  N.  S.  135,  note 383 

Spottiswoode  v.  Clarke,  2  Phil.  154-1846 447 

Springhead  Spinning  Co.  v.  Riley,  L.  R.  6  Eq.  551-1868 399 

Stachelberg  v.  Ponce,  23   Fed.  430-1885 247,  486 

Standard  Oil  Co.  v.  Doyle,  118  Ky.  662-1904,  82  S.  W.  271 386 

Standard  Table  Oil  Cloth  Co.  v.  Trenton  Oil  Cloth  &  Linoleum  Co.,        N.  J. 

Eq.        ;   63  Atl.  846-1900 278 

Standard  Varnish  Works  v.  Fisher,  Thorsen  &  Co.,  153  Fed.  928-1907   (C.  C. 

Oreg.)    261 

State,  The  v.  McGrath,  75  Mo.  424-1882    217 

Stein  v.  National  Life  Assn.,   105  Ga.   821-1898,  32  S.  E.  615,  46  L.  R.  A. 

150 118,  432 

Steinfeld  v.  National  Shirt  Waist  Co.,  99  App.  Div.    (N.  Y.)    286-1904,  90 

N.  Y.  Supp.  964  120 

Steinway  &  Sons  v.  Henshaw,  5  R.  P.  C.  77-1887   (Ch.  Div.) 272 

Stephens  v.  Peel,  16  L.  T.  N.  S.  145-1867   270,  335 

Sterling  Remedy  Co.  v.  Eureka  Chemical  &  Mfg.  Co.,  70  Fed.  704-1895  (C.  C. 

W.   D.   Wis.)     269 

Sterling  Remedy  Company  v.  Gorey,  110  Fed.  372-1901  (C.  C.  N.  D.  Ohio)  .  .  336 
Sterling  Remedy  Co.  v.  Spermine  Medical  Co.,  112  Fed.  1000-1901    (C  C.  A. 

7th  Cir.),  106  Fed.  414-1901   (C.  C.  A.  2d  Cir.) 83,  273,  310.  452,  453 

Sterling  Varnish  Co.  v.  'Macon,  217  Pa.  St.  7-1907,  66  Atl.  78 425 

Sternberg  Mfg.  Co.  v.  Miller  &  Co.,  161  Fed.  318-1908   (C.  C.  A.  8th  Cir.)  ..   302 

Stewart  v.  Hook,  118  Ga.  445,  45  S.  E.  369,  63  L.  R.  A.  255 427 

Stewart  V.  Stewart,  91   Fed.  243    (CCA.)    271 

Stirling  Silk  Mfg.  Co.  v.  Sterling  Silk  Co.,  59  N.  J.  Eq.  394-1900,  46  Atl. 

199 87,  447,.  494,  511 

Stoddart  v.  Key,  62  How.  Pr.  137-1881 376 

Stone  v.   Grasselli   Chemical  Co.,    65   N.   J.   Eq.    756-1903,   55   Atl.   736,   63 

L.  R.  A.  344   425,  433 

Stonebraker  v.  Stonebraker,  33  Md.  252-1870    147,  151 

Street  v.  Union  Bank,  30  Ch.  Div.  156-1885   188 

Stuart  v.  La  Salle  County,  etc.,  83  111.  341-185   40 

Stuart  v.  Simpson,  1  Wend.  376-1828 303 

Stuart  v.  F.  G.  Stewart  Co.,  91  Fed.  243-1899   (C  C  A.  7th  Cir.) 77 

Supreme  Lodge,  Knights  of  Pythias  v.  Improved  Order  Knights  of  Pythias, 

113  Mich.  133-1897,  71  N.  W.  470,  38  L.  R.  A 204,  658 

Swain  v.  Seamens,  9  Wall.  254-1869,  76  U.  S.  254,  19  L.  ed.  554 513 

Swift  &  Co.  v.  Brenner,  125  Fed.  826-1903  (C  C  S.  D.  N.  Y.) 68 

Sykes  v.  Sykes,  3  B.  &  C  541-1824 27,  31,  176 

Symonds  v.  Iowa  Soap  Co.,  104  Fed.  548   247 

Symonds  v.  Jones,  82  Me.  302-1890 489 


Table  of  Cases.  xliii 

T-  PAGE. 

Tabor  v.  Hoffman,  118  N.  Y.  30-1 S89,  23  N.  E.  12,  16  Am.  St.  Rep.  740 419 

420,  422,  426 
Taendsticksfabriks   Akticbolagat  Vulcan  v.  Myers,   139   X.   Y.    364-1893,   34 

N.  E.  904  338,  445 

Tallcot  v.  Moore,  6  Hun,  106-1875 74 

Tallerman  v.  Dowsing  Radiant  Heat  Co.   ( 1900) ,  1  Cli.  1 36 

Tarleton  v.  McGawley,  1  Peake  N.  P.  C.  270 352 

Tarrant  &  Co.  v.  Johann  Hoff,  76  Fed.  959-1S96,  22  C.  C.  A.  644 131 

Tasker  v.  Stanley,  153  Mass.  148  364 

Tavis   v.   Knapp,    121   Fed.   34;    Harrison  v.   Glucose   Co.,    116   Fed.   304,   58 

L.  R.  A.  915   422 

Taylor  Iron  &  Steel  Co.  v.  Nichols,  70  N.  J.  Eq.  541-1905,  s.  c,  65  Am.  Rep. 

695-1907 365 

Taylor  v.  Carpenter,  2  Sandf.  Ch.  676-1845   33 

Taylor  v.  Carpenter,  3  Story,  458-1844   507 

Taylor  Iron  &  Steel  Co.  v.  Nichols,  70  N.  J.  Eq.  541-1905,  61   Atl.   946,  09 

Atl.   186-1908    (N.  J.  Er.  &  App.) 425,  432 

Taylor,  E.  H.,  Jr.,  &  Sons  Co.  v.  Taylor,  27  Ky.  L.  Rep.  625,  85  S.  W.  1085 

1905 149,  458 

Teacher  v.  Levy,  23  R.  P.  C.  117-1905   328 

Teed  v.  Elworthy,  14  East,  210,  Greenlf.  Ev.  278 188 

Temperton  v.  Russell,  1  Q.  B.  D.  715-1893 302,  369 

Thacker   Coal  &   Coke   Co.   v.   Burke,  59  W.  Va.  253-1906,   53   S.   E.    161,   5 

L.  R.  A.  N.  S.  1091    359 

Thomas  v.  Williams,  L.  R.  14  Ch.  Div.  864-1880 394,  402,  403,  417 

Thompson  v.  Montgomery,  41   Ch.  Div.  35-18S9;   affd.,  App.   Cas.   217-1S91, 

:<  Stone  Ale  "   52,   170,  279 

Thorley's  Cattle  Food  Co.  v.  Massam,  L.  R.  6  Ch.  Div.  582-1877,  see  on  appeal 

14  Ch.  Div.   763-1880 392,   393,   401,   402,  403 

Thorneloe  v.  Hill,  11  R.  P.  C.  01-1 S94   (Ch.  Div.)    102 

Thum  &  Co.  v.  Tloczynski,  114  Mich.   149-1 S97,  38  L.  R.  A.  200,  72  N.  W. 

140 431 

Thynne  v.  Shove,  45  Ch.  Div.  577-1S90 116 

Tipping  v.  Clarke,  2  Hare,  393    434 

Tobias  v.  Harland.  4  Wend.    (N.  Y.)    537-1830 411,  413 

Tode  v.  Gross,  127  N.  Y.  480-1891,  28  N.  E.  469,  13  L.  R,  A.  652,  note 435 

Toledo,  etc.,  Ry.  Co.  v.  Pennsylvania  Co.,  54  Fed.  730-IS93   (C.  C.  Ohio),  19 

L.  R.  A.  387   416 

Tolman  v.  Mulcahy,  119  App.  Div.    (N.  Y.)   42-1907,  103  N.  Y.  Supp.  936...    429 

Trade-mark  Cases,  100  U.  S.  82,  25  L.  ed.  550   52 

Trego  v.  Hunt,  12  T.  R.  R.  80-1895   (1896),  App.  Cas.  7 113,   114,  118,  439 

Tuchman  v.  Welch,  42  Fed.  548-1890   40 

Turton  v.  Turton,  42  Ch.  Div.  128-1889 56,  126,   128,  183 

Tussaud  v.  Tussaud,  44  Ch.  Div.  678-1890  151 

U. 

United  States  v.  Duell,  17  App.  Cas.   (D.  C.)   575-1901   6 

United  States  Frame  &_ Picture  Co.  v.  Horowitz,  51  Misc.   (N.  Y)    101-1906, 
100  N.  Y.  Supp.  705  87 


xliv  Table  of  Cases. 

PAGF. 

United  States  Tobacco  Co.  v.  McGreenery,  144  Fed.  531-1006   (C.  C.  Mass.)  ; 

affd.,   144  Fed.   1022 59,  313 

Uri  v.  Hirsch,  123  Fed.  508-1903   (C.  C.  VV.  D.  Mo.) 490 

U.  S.  Mercantile  Reporting!  Co.  v.  U.  S.  Mercantile  Rep.  &  Collecting  Assn., 

21  Abb.  N.  C.   (N.  Y.)    113-1888   5S 

V. 

Vacuum  Oil  Co.  v.  Eagle  Oil  Co.,  122  Fed.  105-1903  (C.  C.  N.  J.) 442 

Vacuum  Oil  Co.  v.  Eagle  Oil  Co.,  154  Fed.  867;  affd.,  162  Fed.  671-1908 442 

Valentine  Meat  Juice  Co.  v.  The  Valentine  Extract  Co.,  Ltd.,  83  L.  T.  N.  S. 

259-1900,  17  R.  P.  C.  673   154 

Van  Auken  Co.  v.  Van  Auken  Steam  Specialty  Co.,  57  111.  App  240-1894 219 

Van  Camp  Packing  Co.  v.  Cruikshanks  Bros.  Co.,  90  Fed.  814-1898   (C.  C.  A. 

3d  C  ir. )    447 

Vanderbilt  v.  Mitchell,  67  Atl.  97-1907    (N.  J.  Ct.  App.) 38,     39 

Van  Hoboken  v.  Mohns  &  Kaltenbach,  112  Fed.  52S-1901   (C.  C.  N.  D.  Cal.)  .   328 

Van  Horn,  Ltd.  v.  Coogan,  52  N.  J.  Eq.  380-1894,  28  Atl.  788 254-494 

Van  Houten  v.  Hooton  Chocolate  Co.,  130  Fed.  600-1904   (C.  C.  N.  J.) 61,  452 

Van  Rault  v.  Schneck,  159  Fed.  248-1908   (C.  C.  Wis.)    462 

Van  Stan's  Stratena   Co.,  Ltd.  v.  Van   Stan,  209  Pa.   St.   564-1904,  58  Atl. 

1064 ". 147-158 

Vegelahn  v.  Gunter,  167  Mass.  92  364-376 

Viano  v.  Baecigalupo,  183  Mass.  160-1903,  67  N.  E.  641 214 

Victor  Safe  &  Lock  Co.  v.  Deright,  147  Fed.  211-1906  (C.  C.  A.  8th  Crr.)  .396,  412 
Victor  Talking  Machine  Co.  v.  Armstrong,   132  Fed.  711-1904    (C.  C.  S.  D. 

N.  Y.)    287 

Vitascope  Co.  v.  II.  S.  Phonograph  Co.,  83  Fed.  30-1897    (C.  C.  N.  J.) 32 

Vonderbank  v.  Sahmitt,  44  La.  Ann.  264-1892,  15  L.  R.  A.  462,  10  So.  616.  .  .    100 

Von  Mumm  v.  Frash,  56  Fed.  830-1893    239 

Von  Mumm  v.  Steinmetz,  137  Fed.  168-1905   (C.  C.  S.  D.  N.  Y.) 512 

Vulcan  Detinning  Co.  v.  American  Can  Co.,  69  Atl.  1103-1908  (N.  J.  Eq.)  .  .  452 
Vulcan  Detinning  Co.  v.  American  Can  Co.,  67  N.  J.  Eq.  243-1904,  58  Atl. 

290  . 422,  427-438 

W. 

Wagner  Typewriter  Co.  v.  F.  S.  Webster  Co.,  144  Fed.  405-1906  (C.  C.  S.  D. 

N.  Y.)    205 

Wallach  v.  Wigmore,  87  Fed.  469   444 

Walker  v.  Cronin,  107  Mass.  555-1871 3C1,  362,  362-364 

Walker  v.  Mottram,  19  Ch.  Div.  355-1881 Ill 

Walter  v.  Ashton,  71  L.  J.  Ch.  839-1902,  2  Ch.  282-1902,  51  Wkly.  Rep.  131.      23 

Walter  v.  Emmot,  54  L.  J.  Ch.  N.  S.  1059-1885   189 

Wamsutta  Mills  v.  Allen,  Cox's  Manual  660-1878   (Com.  PI.  Phila.) 273 

Warren,  A.  D.  v.  Warren  Thread  Co.,  134  Mass.  247-1883 108 

Warren  Featherbone  Co.  v.  Landauer,  151  Fed.  130-1903   (C.  C.  Wis.)  .  .  .406,  410 

411-415 

Watkins  v.  Landon,  52  Minn.  389-1893,  54  N.  W.  193,  19  L.  R.  A.  236 426 

Wedderburn  v.  Wedderburn,  22  Beav.  84-1855 119 

Weener  v.  Brayton,  152  Mass.  101,  25  X.  E.  46,  8  L.  R.  A.  640 35 

Weingarten  v.  Charles  Bayer  &  Co.,  22  R.  P.  C.  341    (H.  L.  1905) 262 


Table  of  Cases.  xlv 

PAGF. 

Weinstock,  Lubin  &  Co.  v.  Marks,  109  Cal.  529-1895,  42  Pac.  142,  30  L.  R.  A. 

182 27,  85,  329,  453 

Welch  v.  Knott,  4  K.  &  J.  747-1857 48 

Wollman  &   Dwire  Tobacco   Co.   v.  Ware   Tobacco   Works,  46   Fed.   289-1891 

(C.   C.  Minn.) 317 

Wells  v.  Ceylon  Perfume  Co.,  105  Fed.  621-1900   (C.  C.  S.  D.  N.  Y.) 268 

Wells  &  Richardson  Co.  v.  Abraham,  146  Fed.  190-1906   (C.  C.  E.  D.  N.  Y.)  ; 

affd.,  149  Fed.  40S-1906  (C  C.  A.  2d  Cir.) 381,  382,  383 

Westcott  Check  Co.  v.  Oneida  Nat.  Check  Co.,  122  App.  Div.   (N.  Y.)   260.282,  301 

Western  Grocer  Co.  v.  Caffarelli,  —  Tex.  — ,  108  S.  W.  413-190S 87,  501 

Weston  v.  Barnicoat,   175  Mass.  454 364 

Westervelt  v.  National  Paper  &  Supply  Co.,  154  Ind.  673-1900,  57  N.  E.  552.  433 

Weyman  v.  Soderberg,  108  Fed.  63-1901   (C.  C.  W.  D.  Wis.) 255 

Wheeler  v.  Johnson,  3  L.  R.  Ir.  284-1879 239 

White  v.  Merritt,  7  N.  Y.  352-1852 371 

White  v.  Trowbridge,  216  Pa.  St.  11,  64  Atl.  862 115,   157 

Whitehead  v.  Kiteon,  119  Mass.  484-1876 400 

Whitstable  Oyster  Fishery  Co.  v.  Hayling  Fisheries,  18  R.  P.  C.  434-1901 ...    250 

Wier's  Appeal,  74  Pa.  St.  230-1873 40 

Wilcox  &  Gibbs  Sewing  Machine  Co.  v.  The  Gibbens  Frame,  17  Fed.  623-1883 

(C.  C.  S.  D.  N.  Y.) 287,  299 

Wilcoxen  v.  McCray,  38  N.  J.  Eq.  466-1884 180 

Wilkinson  v.  Griffith  Bros.  &  Co.,  8  Rep.  Pat.  Cas.  370 76 

Williams  v.  Adams,  8  Biss.  452-1S79    (C.  C.  111.) 504 

Williams  v.  Brooks,  50  Conn.  278-1882 319,  468 

Williams  v.  Farrand,  88  Mich.  473-1891,  50  N.  W.  446,  14  L.  R.  A.  161 99 

Williams  v.  Wilson,  4  Sandf.  Ch.   (N.  Y.)  379-1846 119 

Williamson  Corset  &  Brace  Co.  v.  Western  Corset  Co.,  70  Mo.  App.  424-1897.      81 

Wilmer  v.  Thomas,  74  Md.  485-1891,  22  Atl.  403,  13  L.  R.  A.  380 108 

Winsmore  v.  Greenbank,  Willes  577-1745  352,  361 

Winsor  v.  Clyde,  9  Phila.  513-1872   (Ct.  Com.  PI.  Phila.) 172 

Wirtz  v.  Eagle  Bottling  Co.,  50  N.  J.  Eq.  164-1892,  24  Atl.  658.  .50,  71,  74, 

306,  330 

Witthaus  v.  Braun.  44  Md.  303-1875 102 

Wolf,  B.  J.,  &   Sons  v.  New  Orleans,  etc.,  Co.,   113  La.  388-1904,  37   So.  2, 

67  L.  R.  A.  65 359 

Wolfe  v.  Barnett  &  Lion,  24  La.  Ann.  97-1872 490 

Wolfe  v.  Burke,  56  N.  Y.  115-1874. 26,  483 

Woodward  v.  Lazar,  21   Cal.  449-1S63 177 

Woollam  v.  Ratcliff,  1  Hem.  &  M.  259-1863 51 

Woolsey  v.  Judd,  4  Duer    (N.  Y.)    379-1855 419 

Worcester   Brewing  Co.   v.   Rueter   &   Co.,   157   Fed.  217-1907    (C.   C.   A.   1st 

•Cir.) 88,  510 

Worcester  Royal  Porcelain  Co.  v.  Locke  &  Co.,  19  R.  P.  C.  479-1902 249 

Worden  &  Co.  v.  California  Fig  Syrup  Co.,  102  Fed.  334-1900 480 

Worden  v.  California  Fig  Syrup  Co.,  187  U.  S.  516-1902,  47  L.  ed.  282,  23 

Sup.    Ct.    161 481 

Wormser  v.  Shayne,  111  111.  App.  556-1904 491,  493 

Wotherspoon  v.  Currie,  t.  R.  5  H.  L.  Cas.  508-1872 52-59,  170,  230,  279 

Wren  v.  Weild,  L.  R.  4  Q.  B.  730-1876 

Wright,  A.  D.  v.  J.  C.  Coules,  4  Cal.  App.  343-1906 416 


xlvi  Table  of  Cases. 


PAGE. 

Wrisley  Co.  v.  Iowa  Soap  Co.,  122  Fed.  796-1903   (C.  C.  A.  8th  Cir.) 62 

Wurm  v.  Webster,  21   K.  P.  C.  373 172 

Wyckoff,    Seamans  &   Benedict   v.    Howe    Scale    Co.,    122    Fed.   348-1903,   58 
C.  C.  A.  510 130,   131 

Y. 

Yale  &  Towne  Mfg.  Co.  v.  Alder,  154  Fed.  37-1907    (C.  C.  A.  2d  Cir.),  revg. 

149  Fed.  783-1906   287,  292 

Yonge  v.  Ward,  21  L.  T.  N.  S.  480 474 

Young  v.  Macrae,  9  Jur.  N.  S.  322-1862 176 

Yovatt  v.  Winyard,  1  J.  &  W.  394-1820 420,  429 


UNFAIR  BUSINESS  COMPETITION. 


CHAPTER  I. 

What  is  Unfair  Competition? 

Section    1.  Unfair  competition  is  not  included  in  term  trade-mark. 

2.  Technical  trade-marks. 

3.  Common  law,  not  trade  mark  statutes,  the  basis  of  the  law  of  un- 

fair competition. 

4.  Difference  between  law  of  unfair  competition  and  that  of  tech- 

nical trade-marks. 

5.  Technical  mark  is  geographic  in   character,  the  right  to   it  is 

limited  territorially;  not  so  with  rights  upheld  by  law  of  un- 
fair competition. 

6.  Early  uses  of  the  term  unfair  competition. 

7.  Growth  of  doctrine  of  unfair  competition. 

8.  Early  cases  involving  unfair  competition. 

9.  Law  of  unfair  competition  does  not  curtail  freedom  of  honor- 

able trading. 

10.  Property  rights  in  marks  which  are  not  technical  trade-marks. 

11.  Exclusive  right  to  a  name  or  mark  not  necessary  to  action. 

12.  Property  right  which  is  acquired  in  a  trade-mark  is  a  limited 

right. 

13.  No    distinction   between   names   and   marks    as   regards   rights 

acquired  by  user. 

14.  Definitions  of  unfair  competition. 

15.  Selling  another's  goods  as  one's  own. 

16.  Grounds  of  action  for  unfair  competition. 

17.  Theory  that  the  court  aims  to  promote  honest  and  fair  dealing. 

18.  Theory  that  the  court  aims  to  protect  the  purchasing  public. 

19.  Theory  that  the  court  aims  to  protect  not  public  rights,  but  rights 

of  individuals. 

20.  Attitude  of  equity  courts  toward  personal  wrongs. 

21.  What  is  infringement1? 

22.  Acts  contributory  to  unfair  acts. 

Section  1.  Unfair  Competition  is  not  Included  in  Term 
Trade-mark. —  In  the  digests  one  usually  finds  unfair  compe- 
tition cases  under  the  general  head  of  trade-marks.    This  is 


2  Unfair  Business  Competition. 

misleading;  for  the  law  of  trade-marks  does  not  include  un- 
fair competition,  but  rather  the  law  that  governs  trade-marks 
and  infringements  of  them  is  but  a  part  of  the  law  regulating 
unfair  and  dishonest  competition  and  trade. 

This  misconception  of  the  true  meaning  and  scope  of  the 
doctrine  of  unfair  competition  may  cause  some  to  take  issue 
with  the  writer,  on  the  correctness  of  including  in  a  book 
bearing  the  title  of  Unfair  Competition,  some  of  the  classes 
of  cases  here  included.  It  is  believed,  however,  that  the  bar 
will  be  called  upon  more  and  more  frequently  to  protect 
traders  whose  business  is  threatened  with  injury  or  destruc- 
tion, from  many  sorts  of  dishonest  or  unfair  competition 
beside  those  arising  out  of  trade-marks  and  trade  names. 
Referring  to  the  development  of  Unfair  Competition  law, 
W.  K.  Townsend  says:  "  Not  yet  fully  adopted  by  all  the 
courts,  still  to  be  developed  in  its  application  to  particular 
circumstances  and  conditions,  this  broad  principle  of  business 
integrity  and  common  justice  is  the  product  and  the  triumph 
of  the  development  of  the  law  of  trade-marks  in  the  last  half 
century,  and  the  bulwark  which  makes  possible  and  protects 
the  world-wide  business  reputations  common  and  growing 
more  common  in  this  new  country."1 

Unfair  competition  is  not  confined  to  acts  directed  against 
the  owners  of  trade-marks  or  tradenames,  but  exists  wherever 
unfair  means  are  used  in  trade  rivalry.  Equity  looks  not  at 
what  business  the  parties  before  the  court  are  engaged  in, 
but  at  the  honesty  or  dishonesty  of  their  acts.  It  is  unfair 
to  pass  off  one's  goods  as  those  of  another  person;  it  is  unfair 
to  imitate  a  rival 's  trade  name  or  label ;  but  he  who  seeks  to 
win  trade  by  fair  means  or  foul  is  not  limited  to  these  methods. 
He  may  copy  and  imitate  the  actual  goods  made  or  sold  by  a 
competitor,—  he  may  libel  or  slander  these  goods,  make 
fraudulent  use  of  a  family  name,  of  trade  secrets,  of  corporate 
names,  of  signs,  of  threats  of  action, —  he  may  construct 
buildings  which  are  reproductions  of  peculiar  buildings  of  a 
rival,  thus  producing  confusion  in  the  minds  of  purchasers, 
which  enables  him  to  purloin  Ms  rival's  trade,  and  in  a  hun- 

1 "  Two  Centuries  Growth  of  American  Law,"  Seribners,  1901. 


What  is  ILxfair  Competition?  3 

dred  other  unfair  ways  secure  another's  trade.  All  acts  done 
in  business  competition  are  either  fair  or  fraudulent,  equi- 
table or  inequitable,  whether  they  relate  to  marks  or  not;  and 
it  is  believed  that  the  question  of  trade-marks  will  soon  be 
lost  sight  of  in  discussing  unfair  competition,  in  the  problem 
of  securing,  through  the  principles  of  equity,  full  protection 
to  every  merchant  against  unfair  business  methods. 

To  understand  the  present  status  of  the  subject,  the  defini- 
tions of  what  is  called  a  technical  trade-mark  should  be  ex- 
amined. 

§  2.  Technical  Trade-marks. —  Trade-marks  existed  many 
years  before  the  first  Registration  Act  was  passed. 

"  The  following  may  be  laid  down  as  characteristics  of  a 
technical  trade-mark :  first,  it  must  point  distinctively,  either 
by  its  meaning  or  by  association,  to  the  origin  or  ownership 
of  the  article  to  which  it  is  affixed ;  second,  it  must  be  affixed 
or  applied  to  a  commercial  article;  third,  it  must  be  of  such 
a  nature  that  it  can  be  rightfully  appropriated  by  one  person, 
to  the  exclusion  of  all  others."2 

"A  trade-mark  is  an  arbitrary,  distinctive  name,  symbol, 
or  device,  to  indicate  or  authenticate  the  origin  of  the  products 
to  which  it  is  attached."3 

"A  trade-mark  is  a  name,  sign,  symbol,  mark,  brand,  or 
device  of  any  kind,  used  to  designate  the  goods  manufactured 
or  sold,  or  the  place  of  business  of  the  manufacturer  or  dealer 
in  such  goods.  The  exclusive  right  in  a  trade-mark  is  ac- 
quired by  its  use,  which  the  law  does  not  require  shall  be  con- 
tinued for  any  prescribed  time."4 

"A  trade-mark  is  a  symbol  arbitrarily  selected  by  a  manu- 
facturer or  dealer  and  attached  to  his  wares  to  indicate  that 
they  are  his  wares.  In  selecting  such  a  device  he  must  avoid 
words  merely  descriptive  of  the  article  or  its  qualities  or 
such  as  have  become  so  by  use  in  connection  with  known 
articles  of  commerce.  *  *  *  "When  it  has  become  generally 
known  in  the  trade  that  this  symbol  or  word  has  been  taken 

2  Paul  on  Trade-marks,  §  22.     See  A.  7th  Cir.) ;  Sartor  v.  Sehaden,  125 

Introduction  to  chapter  XII.  Iowa  696-700-1904;  101  N.  W.  511. 

*  Cole  Co.  v.  American  Cement  Co.,  *  Shaver  v.  Shaver,  54  Iowa  208— 

130  F.  R.  703-1904,  at  p.  705  (C.  C.  1SS0,  at  p.  2?0;  6  N   W.  1SS. 


4  Unfair  Business  Competition. 

by  one  dealer  or  manufacturer  to  indicate  his  goods,  he  ac- 
quires a  title  to  it  for  the  purpose,  and  no  one  can  use  it  even 
innocently. ' '  (Anonymous.) 

' '  A  trade-mark  is  a  particular  word,  sign,  symbol,  or  device 
which,  by  exclusive  use,  becomes  recognized  as  the  distinguish- 
ing mark  of  the  owner's  goods,"  and  for  the  protection  of 
which  the  aid  of  equity  may  be  properly  invoked. ' ' 5 

"  The  purpose  of  the  trade-mark  is  to  get  before  the  public 
in  a  unique  and  impressive  manner,  the  goods  on  which  the 
mark  is  used  and  to  distinguish  such  goods  from  all  other  goods 
on  the  market  of  the  same  class  or  description.  It  serves  a 
two-fold  purpose, —  to  protect  the  owner  from  unfair  compe- 
tition, and  the  public  from  being  deceived."6 

If  a  word  which  is  publici  juris  be  adopted  as  the 
name  of  a  particular  brand  of  goods,  by  user  and  association 
it  may  come  to  be  the  common  everyday  meaning  of  that 
one  brand,  besides  retaining  its  original  meaning.  "When 
a  public  name  is  so  used  it  is  just  as  much  a  trade-mark 
as  the  most  fanciful  made-up  word  known;  and  it  will  be 
protected,  not  as  a  technical  mark  which  is  the  sole  property  of 
one  man,  but  as  a  mark  identifying  goods ;  and  it  receives  such 
protection  under  the  law  of  unfair  competition.  It  will  be 
noticed  that  none  of  these  definitions  of  a  trade-mark  or  trade 
name  requires  any  action  on  the  part  of  the  government,  either 
state  or  national.  Certain  of  the  states,  however,  have  statutes 
providing  for  the  registration  of  trade-marks  and  names; 
and  Congress  has  provided  for  the  registration  of  trade-marks 
by  the  following  Act  of  May  4,  1906:  Sec.  16,  "  That  the 
registration  of  a  trade-mark  under  the  provisions  of  this  Act 
shall  be  prima  facie  evidence  of  ownership.  Any  person  who 
shall,  without  the  consent  of  the  owner  thereof,  reproduce, 
counterfeit,  copy  or  colorably  imitate  any  such  trade-mark  and 
affix  the  same  to  merchandise  of  substantially  the  same  descrip- 
tive properties  as  those  set  forth  in  the  registration,  or  to 
labels,  signs,  prints,  packages,  wrappers,  or  receptacles  in- 
tended to  be  used  upon  or  in  connection  with  the  sale  of  mer- 
chandise of  substantially  the  same  descriptive  properties  as 

5  High  on  Injunctions,  §1063.  v.  Maltine  Co.,  30  App.  Cas.  (D.  C.) 

*  Peter   Schoenhofen  Brewing    Co.      340-3-]908. 


"What  is  Unfair  Competition?  5 

those  set  forth  in  such  registration,  and  shall  use  or  shall  have 
used  such  reproduction,  counterfeit,  copy  or  colorable  imita- 
tion in  commerce  among  the  several  states  or  with  a  foreign 
nation  or  with  the  Indian  tribes  shall  be  liable  to  an  action  for 
damages  therefor  at  the  suit  of  the  owner  thereof,"  etc. 

The  Supreme  Court  of  the  United  States  thus  speaks  of  the 
relation  of  trade-marks  to  legislation:  "  The  right  to  adopt 
and  use  a  symbol  or  device  to  distinguish  the  goods  or  property 
made  or  sold  by  the  person  whose  mark  it  is,  to  the  exclusion 
of  use  by  all  other  persons,  has  been  long  recognized  by  the 
common  law  and  the  chancery  courts  of  England  and  of  this 
country.  *  *  *  It  is  a  property  right  for  the  violation  of 
which  damages  may  be  recovered  in  an  action  at  law,  and  the 
continued  violation  of  it  will  be  enjoined  by  a  court  of  equity 
with  compensation  for  past  infringement.  This  exclusive  right 
was  not  created  by  the  act  of  Congress  and  does  not  now  de- 
pend upon  it  for  its  enforcement.  The  whole  system  of  trade- 
mark property  and  the  civil  remedies  for  its  protection  existed 
long  anterior  to  that  act  (viz.,  Act  of  July  8,  1870),  and  have 
remained  in  full  force  since  its  passage."7 

The  term  ' '  technical  trade-mark  ' '  seems  to  mean  that  the 
mark  is  one  that  is  fanciful  to  such  an  extent  that  it  may 
become  the  sole  property  of  him  who  makes  it  up,  just  as  a 
tree  that  one  plants  on  his  own  ground  or  a  piece  of  furniture 
that  one  makes  with  his  own  hand  of  his  own  material  is  his. 
There  is  a  real  difference  between  such  a  name  and  one  which 
is  primarily  a  word  publici  juris,  but  is  also  a  trade-mark. 

The  term  "  technical  trade-mark  "  may  therefore  be  said  to 
refer  to  common  law  trade-marks,  those  marks  which  were 
considered  trade-marks  before  the  law  of  unfair  competition 
was  generally  understood.  It  does  not  mean  a  mark  that  has 
been  registered. 

The  law  governing  the  right  of  action  given  by  the  above- 
mentioned  statutes  is  not  considered  here;  attention  being 
confined  to  cases  of  unfair  trade  in  competition. 

§  3.  Common  Law,  not  Trade-mark  Statutes,  the  Basis 
of  the  Law  of  .Unfair  Competition. —  These   statutes  have 

T  Trade-Mark  Cases,  100  U.  S.  82-100. 


G  Unfair  Business  Competition. 

made  no  change  in  the  law  of  trade-marks  or  in  the  law  relat- 
ing to  unfair  competition. 

"  Registration  under  the  statute  confers  no  new  rights  to 
the  mark  claimed  or  any  greater  rights  than  already  exist  at 
common  law  without  registration."8 

' '  The  registry  of  a  trade-mark  under  this  law  adds  nothing 
to  the  right  of  ownership  therein  (except  jurisdiction  in  the 
United  States  Court,  of  doubtful  constitutionality)  and  takes 
nothing  away  from  such  ownership. ' ' 9 

The  effect  of  the  Federal  act  is  three-fold:  (a)  it  creates 
a  permanent  record  of  the  date  of  adoption  and  use  of  a 
mark;  (b)  gives  jurisdiction  to  the  Federal  courts  where 
all  parties  are  citizens  of  the  same  state;10  (c)  enables  treaty 
stipulations  to  be  carried  out.11  Common  law  rights  as  to 
trade-marks  remain  unaffected,  for  the  statute  expressly 
states:  "  Nothing  in  this  act  shall  prevent,  lessen,  impeach 
or  avoid  any  remedy  at  law  or  in  equity,  which  any  party  ag- 
grieved by  any  wrongful  use  of  any  trade-mark  might  have 
had,  if  the  provisions  of  this  chapter  had  not  been  enacted."  13 

The  same  is  true  of  the  English  Trade-Marks  Act.  Speaking 
of  it,  Cotton,  L.  J.,  says  that  formerly  when  a  court  passed  on 
a  trade-mark  question,  a  trade-mark  signified  a  "  mark  to  the 
use  of  which  the  plaintiff  had  by  user  entitled  himself,  and 
the  injunction  was  obtained  where  the  defendant  was  marking 
his  goods  with  a  mark  so  similar  to  that  used  by  the  plaintiffs 
as  to  be  calculated  to  pass  them  off  as  the  goods  of  the  plain- 
tiffs. Of  course,  in  order  to  enable  the  court  to  arrive  at  that 
conclusion,  it  had  to  be  shown  that  the  plaintiffs  had  for  a 
period  of  time  been  selling  their  goods  with  a  mark  which  distin- 
guished them.  For  the  purpose  of  seeing  whether  or  not  the 
mark  upon  their  goods  did  distinguish  them,  it  was  of  course 
necessary  to  see  what  marks  were  in  common  use  by  the  trade 
as  regards  that  particular  class  of  goods,  and  then,  having 
ascertained  that  fact,  it  had  to  be  considered  whether,  hav- 
ing regard  to  the  marks  which  were  in  common  use,  what  was 

8  28  Am.  &  Eng.  Encye.  435.  Co.,    89    F.    R.    604-189S     (C.    C. 

8  Sarrazin  v.  W.  R.  Irby  Cigar  Co.,  Cal.). 

S3  F.  R.  624-27-1899  (C.  C.  A.  5th  u  U.  S.  v.  Duell,  17  App.  Cas.  D. 

Cir.) ;  46  L.  R.  A.  541n.  C.  575-1901. 

10  Hennessy   v.   Brannschweiger   &  "  Act  of  1905,  §  23. 


What  is  Unfair  Competition?  7 

being  done  by  the  defendants  was  calculated  to  pass  off  their 
goods  as  the  goods  of  the  plaintiffs.  How  is  this  altered?  It 
was  contended  in  argument  that  the  Trade-Marks  Act  has 
entirely  altered  the  question.  I  do  not  say  that  the  effect  of  the 
act  may  not  be  to  give  a  person  an  absolute  right  to  the  regis- 
tered trade-mark  so  as  to  entitle  him  to  restrain  another  per- 
son from  selling  goods  with  that  mark  upon  them  without 
reference  to  the  question  whether  or  not  the  goods  are  sold  un- 
der such  circumstances  as  to  pass  them  off  as  the  goods  of  the 
plaintiffs.  I  say  nothing  upon  that  point,  but  I  say  that,  in 
my  opinion,  the  act  in  no  way  interferes  with  the  exercise  by 
a  court  of  equity  of  its  old  jurisdiction.  What  the  act  does,  as 
I  understand  it,  is  this:  It  enables  persons  to  register  a 
trade-mark,  and  when  they  register  it  that  is  equivalent  to 
evidence  of  public  use  of  it  by  them,  and  during  five  years 
the  registration  is  prima  facie  evidence  of  their  exclusive 
right  to  it,  and  after  the  five  years  it  is  conclusive  evidence  of 
such  right. ' ' 13 

Registration  does  not  in  any  way  conclude  any  property 
rights  in  a  mark.  All  parties  interested  are  free  after  regis- 
tration to  maintain  whatever  rights  they  may  have  in  law  or  in 
equity.14 

§  4.  Difference  Between  the  Law  of  Unfair  Competition 
and  that  of  Technical  Trade-marks. — The  use  of  a  special  mark 
in  connection  with  particular  goods  or  a  particular  business  is  a 
representation  that  those  goods  or  that  business  are  the  goods 
or  business  of  the  person  to  whom  the  mark  belongs;  that 
they  belong  to  the  person  with  whom  the  mark  has  be- 
come identified.  If  such  representation  is  false,  a  case  of  un- 
fair competition  exists.  The  law  of  trade-marks,  therefore,  is 
merely  a  specialized  branch  of  the  broader  doctrine  of  unfair 
competition.  Relief  in  trade-mark  cases  is  afforded  upon 
the  express  ground  that  every  person  is  entitled  to  secure  such 
profits  as  result  from  a  reputation  for  superior  skill,  industry, 
or  enterprise,  or,  in  other  words,  from  his  good-will.  But,  as 
has  just  been  seen,  this  is  the  precise  principle  upon  which 
relief  is  afforded  in  cases  of  unfair  competition.    The  right  of 

"Mitchell  v.  Henry,  15  Ch.  Div.  Silver  Co.,  30  App.  Cas.  (D.  C.) 
181-92-1880.  97-105-190S. 

14  Wm.  A.  Rogers  v.  International 


8  Unfair  Business  Competition. 

action  in  technical  trade-mark  cases  is  based  upon  the  ground 
that  an  exclusive  property  right  in  the  mark  is  claimed  and 
that  the  mere  use  of  a  close  imitation  of  it,  by  another,  ipso 
facto  creates  a  cause  of  action,  regardless  of  the  effect  of  such 
use  or  imitation.  But  the  courts  in  the  past  have  frequently 
lost  sight  of  the  broad  general  principles  of  unfair  competition. 
and  have  sought  to  decide  cases  of  unfair  competition  pure 
and  simple,  "  upon  principles  analogous  to  trade-marks." 
The  owner  of  a  technical  trade-mark  claims  it  as  his,  regard- 
less of  the  effect  on  others.  If  some  one  else  uses  it  or 
imitates  it,  the  owner  claims  a  right  of  action  because  the  mark 
is  his  and  his  alone. 

After  the  value  of  the  trade-mark  in  business  had  been 
realized,  to  an  extent  at  least,  many  attempts  were  made  to 
give  a  judicial  definition  of  what  constituted  a  trade-mark, — 
what,  in  other  words,  was  such  a  name,  mark,  design  or  letter 
or  other  insignia  as  was  capable  of  being  justly  and  fairly 
appropriated  exclusively  by  one  person  as  his  business  mark 
or  name.  It  was  soon  realized,  however,  that  the  basic  prob- 
lem was  not  whether  a  mark  could  be  used  by  one  person 
exclusively,  or  whether  it  could  be  registered  under  some 
statute,  but  whether  fraud  was  resulting  from  the  use  to 
which  it  was  being  put.  The  result  of  this  new  view  was  the 
law  of  unfair  competition,  which  is  concerned  only  with  the 
honesty  and  fairness  of  the  use  to  which  the  mark  is  put,  not 
with  the  question  as  to  what  is  a  technical  trade-mark.  To 
ascertain  who  has  rights  in  a  name  or  mark  is  just  as  im- 
portant in  an  unfair  competition  case  as  in  a  technical  trade- 
mark case,  but  this  ownership  does  not  hinge  on  whether  or 
not  the  mark  is  a  technical  mark,  for  there  may  be  various 
kinds  or  degrees  of  ownership  in  it,  although  none  of  them 
carry  with  it  an  exclusive  right  to  use  it. 

Unfair  competition  does  not  necessarily  involve  the  vio- 
lation of  any  exclusive  right  to  the  use  of  a  word,  mark,  or 
symbol.  It  may  arise  from  the  use  of  words,  marks,  or  sym- 
bols which  are  free  to  everybody  to  use  and  are  not  subject 
to  exclusive  appropriation  by  any  one.  The  existence  of  this 
right  of  action  depends  upon  the  question  of  fact,  whether 
what  was  done  in  any  special  case  tends  to  pass  off  the  goods 


What  is  Unfair  Competition?  9 

of  one  man  as  being  those  of  another,  or  tends  to  deprive  any 
one  of  his  rights.  This  is  the  only  substantial  distinction  be- 
tween cases  of  unfair  competition,  or  passing  off  actions  as 
they  are  called  in  England,  and  cases  of  infringement  of 
trade-marks. 

Where  unfair  competition  is  charged  as  to  a  name,  the  words 
making  up  the  name  may  be  purely  generic  or  descriptive  or 
may  be  indicative  of  general  qualities  such  as  style,  size,  shape, 
—  words  which  are  public  property  as  much  as  are  "  the  adjec- 
tives of  the  language."15  All  rival  trades  have  an  absolute 
right  to  use  such  words  and  names ;  but  if  one  of  these  words, 
by  long  association  with  the  goods  of  one  person,  has  come  to 
mean  to  the  public  his  goods  alone  and  not  such  goods  in 
general,  then  any  other  person  will  be  prohibited  from 
using  them.  In  the  words  of  Dennison  Mfg.  Co.  v. 
Thomas  Mfg.  Co.  (supra),  such  a  trader  "  will  not  be 
permitted,  with  intent  to  mislead  the  public,  to  use  such  words, 
marks,  or  symbols  in  such  a  manner,  by  trade  dress  or  other- 
wise, as  to  deceive  or  be  capable  of  deceiving  the  public  as  to 
the  origin,  manufacture,  or  ownership  of  the  articles  to  which 
they  are  applied ;  and  the  latter  may  be  required,  when  using 
such  words,  marks,  or  symbols,  to  place  on  articles  of  his  own 
production  or  the  packages  in  which  they  are  usually  sold  some- 
thing clearly  denoting  the  origin,  manufacture,  or  ownership 
of  such  articles,  or  negativing  any  idea  that  they  were  produced 
or  sold  by  the  former." 

The  foundation  principle  is  the  same,  in  both  trade-mark 
and  unfair  competition  cases,  and  that  is  that  no  manufacturer 
or  trader  should  be  allowed  to  dress  up  his  goods  in  such  a 
style  and  form,  and  by  the  use  of  such  names  and  marks,  or 
colorable  imitations  thereof  or  to  mark  his  goods  in  a  way  cal- 
culated to  mislead  the  public,  or  to  induce  purchasers  to  buy 
his  goods  as  for  the  goods  of  some  other  trader,  who,  by  the 
adoption  of  certain  distinctive  marks  and  indicia,  and  by  a 
course  of  fair  dealing,  has  made  the  public  familiar  with  and 
friendly  to  his  goods  under  these  marks.  Both  actions  rest 
upon  the  same  principle,  which  is  that  no  man  has  a  right  to 

KDennkon  Mfg.  Co.  v.  Thomas  Mfg.  Co.,  94  Fed.  651-1899  (C.  C.  Del.)- 


10  Unfair  Business  Competition. 

pass  off  his  goods  upon  the  public  as  and  for  the  goods  of  an- 
other. "  Inasmuch  as  the  testimony  shows  unfair  competition 
which  entitled  them  (plaintiffs)  to  an  injunction,  it  is  deemed 
unnecessary  to  discuss  the  distinction  which  seemed  to  differ- 
entiate this  case  from  one  of  trade-mark,  pure  and  simple,  the 
foundation  principle  upon  which  relief  is  granted  being  sub- 
stantially the  same  and  the  like  remedy   invoked. ' ' 16 

Again,  "An  infringement  of  a  trade-mark  consists  in  the 
use  of  the  genuine  upon  substituted  goods  or  of  an  exact  copy 
or  reproduction  of  the  genuine,  or  in  the  use  of  an  imita- 
tion in  which  the  difference  is  colorable  only,  and  the  re- 
semblance avails  to  mislead  so  that  the  goods  to  which  the 
spurious  trade-mark  is  affixed  are  likely  to  be  mistaken  for  the 
genuine  product;  and  this  upon  the  ground  that  the  trade- 
mark adopted  by  one  is  the  exclusive  property  of  its  proprietor, 
and  such  use  of  the  genuine,  or  such  imitation  of  it,  is  an  in- 
vasion of  his  right  of  property.  Unfair  competition  is 
distinguishable  from  the  infringement  of  a  trade-mark  in  this : 
that  it  does  not  necessarily  involve  the  question  of  the  exclu- 
sive right  of  another  to  the  use  of  the  name,  symbol,  or  device. 
A  word  may  be  purely  generic  or  descriptive,  and  so  not  capa- 
ble of  becoming  an  arbitrary  trade-mark,  and  yet  there  may 
be  an  unfair  use  of  such  word  or  symbol  which  will  constitute 
unfair  competition.  Thus  a  proper  or  geographical  name  is 
not  the  subject  of  a  trade-mark,  but  may  be  so  used  by  another, 
unfairly  producing  confusion  of  goods,  and  so  come  under  the 
condemnation  of  unfair  trade,  and  its  use  will  be  enjoined. 
The  right  to  the  use  of  an  arbitrary  name  or  device  as  indicia 
of  origin  is  protected  upon  the  ground  of  a  legal  right  to  its 
use  by  the  person  appropriating  it. ' ' 16a 

The  first  case  involving  a  trade-mark  or  trade-name  in 
which  the  courts  in  America  granted  an  injunction  was  decided 
in  1844,  by  Judge  Story.  This  was  the  "  Taylor's  Persian 
Thread  "  case.  This  entire  body  of  law  relating  to  trade-marks 
and  unfair  trade  has  developed  in  the  past  fifty-five  years. 

"  Scriven  v.  North,  134  Fed.  366-  16a  G.    W.    Cole    Co.    v.    American 

80-1904  (C.  C.  A.  4th  Cir.),  67  Cement  Co.,  130  Fed.  703-1904,  at 
C.  C.  A.  348.  p.  705  (C.  C.  A.  7th  Cir.). 


What  is  Unfair  Competition"  11 

"  During  this  period  of  growth  the  courts,  at  first  inclined 
to  develop  the  law  along  narrow  and  technical  lines,  have  come 
to  see  more  and  more  clearly  the  fundamental  principles  upon 
which  to  act  in  extending  this  protection  of  the  law  to  the 
achievements  of  business.  Now  the  technical  doctrines  are  less 
and  less  employed  and  one  simple  just  rule  is  invoked.  The 
law  of  trade-marks  is  disappearing  in  a  broader  principle 
which  prohibits  unfair  trade."  17 

A  similar  statement  is  made  in  Church  &  D wight  Co.  v. 
Russ.ls  "  The  tendency  of  the  courts  at  the  present  time  seems 
to  be  to  restrict  the  scope  of  the  law  applicable  to  technical 
trade-marks,  and  to  extend  its  scope  in  cases  of  unfair  com- 
petition." 

§  5.  Technical  Mark  is  Geographic  in  Character;  the  Right 
to  it  is  Limited  Territorially;  not  so  with  Rights  Upheld  by 
Law  of  Unfair  Competition. —  Again,  a  trade-mark,  if  regis- 
tered, is  of  necessity  geographical,  and  the  rights  under  it  ex- 
tend to  the  full  limits  of  the  jurisdiction  granting  rights  to  its 
owner. 

Not  so  with  a  trade  name  or  mark  in  which  no  one  has  rights 
except  by  reason  of  the  doctrine  of  unfair  competition.  A 
right  of  this  sort  and  a  right  in  the  secondary  use  of  a  word 
or  mark  is  of  value  only  in  the  locality  where  usage  and  com- 
mon knowledge  render  the  right  valuable.19 

§  6.  Early  Uses  of  the  Term  Unfair  Competition. —  The  law 
of  unfair  competition  has  sometimes  been  a  favored  doctrine 
of  the  courts,  and  at  other  times  it  has  been  looked  upon  as 
overriding  other  rules  of  law  which  the  courts  must  preserve. 
Some  of  the  early  cases  are  given  below  as  showing  the  begin- 
nings of  the  doctrine.  Lord  Hardwicke  refused  an  injunction 
in  the  case  of  Blanchard  v.  Hill.20     This  was  an  action  to 

"Vwo  Centuries  Growth  of  Amer-  1893    (C.   C.   A.   3d   Cir.) ;    City   of 

ican     Law,"     Scribners,      1901,     by  Carlsbad   v.   Kutnow,   71   Fed.   167- 

Faculty  of  Yale  Law  School,  p.  43G.  1895   (C.  C.  A.  2d  Cir.);  Draper  v. 

18  99     Fed.     276-78-1900     (C.     C.  Skerrett,  116  Fed.  206-1902   (C.  C. 

Ind.).  E.  D.  Pa.)  ;  Hainque  v.  Cyclops  Iron 

39  Sartor  v.  Sclia den,  125  Iowa  696-  Works,  136   Cal.   351-1902;  68  Pac. 

1904;  101  N.  W.  511.     See  also  Der-  1014. 
ringer   v.    Plate,    29    Cal.    293-1865;  I0  2  Atk.  484-1742. 

Richter   v.    Reynolds,   59    Fed.   577- 


12  Unfair  Business  Competition. 

restrain  the  defendant  from  using  the  Mogul  stamp  on  his 
cards.  The  plaintiff,  in  conformity  with  the  charter  granted 
to  the  Cardmaker's  Company  by  King  Charles  I,  had  appro- 
priated the  stamp  to  himself,  and  so  considered  the  sole  right 
to  be  in  him.  His  lordship  said:  "  Every  particular  trader 
has  some  particular  mark  or  stamp;  but  I  do  not  know  any 
instance  of  granting  an  injunction  here,  to  restrain  one  trader 
from  using  the  same  mark  with  another ;  and  I  think  it  would 
be  of  mischievous  consequence  to  do  it."  He  then  referred 
to  a  case  cited  in  Southern  v.  IIoiv,21  where  an  action  was 
brought  by  a  cloth  worker  against  another  of  the  same  trade 
for  using  the  same  mark,  and  judgment  was  given  that  the 
action  would  lie;  but  added,  "  it  was  not  the  single  act  of 
making  use  of  the  mark  that  was  sufficient  to  maintain  the 
action,  but  doing  it  with  a  fraudulent  design,  to  put  off  bad 
cloths  by  this  means,  or  to  draw  away  customers  from  the 
other  clothier." 

Lord  Eldon  in  Hogg  v.  Kirby,22  a  case  decided  in  1803, 
speaks  of  "fair  competition:"  and  it  is  doubtful  if  the 
term  "  fair  competition  "  or  "  unfair  competition  "  had  been 
used  prior  to  that  time.  The  body  of  law  now  referred  to 
as  the  doctrine  of  unfair  competition  has  been  but  recently 
known  under  that  name.  This  is  shown  by  the  fact  that  Mr. 
Cox,  in  his  well-known  "  Manual  of  Trade-Mark  Cases," 
published  in  1892,  refers  in  his  index  to  but  eight  cases  as 
unfair  competition  cases,  although  many  of  the  cases  he  in- 
cludes in  the  volume  are  now  frequently  cited  as  laying  down 
the  fundamental  rules  of  that  law.  It  is  now  certain  that  it  is 
a  part  of  the  general  body  of  law ;  and  that  the  doctrines  on 
which  it  is  based  will,  in  the  future,  be  applied  more  and  more 
widely  to  prevent  unfair  and  dishonest  trading.  "  The  orig- 
inal foundation  of  the  whole  law  is  this,  that  when  one  knowing 
that  goods  are  not  made  by  a  particular  trader  sells  them 
as  and  for  the  goods  of  that  trader,  he  does  that  which  injures 
that  trader.  At  first  it  was  put  upon  the  ground  that  he  did 
so  when  he  sold  inferior  goods  as  and  for  the  trader's;  but  it 

MPoph.  144.  "8  Vesey  Jr.  215-1803. 


What  is   Unfair  Competition1?  13 

is  established  alike  at  law2n  and  in  equity,24  that  it  is  an  action- 
able injury  to  pass  off  goods  not  known  to  be  the  plaintiff's  as 
and  for  the  plaintiff's,  even  though  not  inferior."  2.5 

It  is,  then,  in  reality  the  name,  unfair  competition,  that  is 
new,  not  the  theory  bearing  the  name;  and  relief  formerly 
given,  as  the  courts  have  so  often  expressed  it,  ' '  on  principles 
similar  to  those  of  trade-mark  cases  "  was  relief  based  on  the 
principles  of  unfair  competition. 

Sebastian  on  Trade-Marks  has  a  chapter  on  "  Cases  Analo- 
gous to  those  of  Trade-Mark,"  Broome  on  Trade-Marks  one  on 
"  Rights  Analogous  to  Those  of  Trade-Marks." 

§  7.  Growth  of  Doctrine  of  Unfair  Competition. —  Unfair 
competition  is  generally  said  to  be  of  recent  origin,  but  this  is 
not  strictly  true  as  is  seen  from  the  foregoing  cases :  For  a  long 
time,  most  cases  involving  the  general  principles  now  forming 
the  law  of  unfair  competition  arose  over  trade-marks  and 
infringements  of  them.  In  more  recent  times  these  or  similar 
principles  have  been  more  and  more  often  invoked  in  cases 
of  unfair  dealing  where  no  trade-mark  was  at  issue.  Cases 
that  would  now  be  considered  instances  of  unfair  competition 
were  decided,  in  the  past,  on  principles  that  were  invoked 
because  the  case  was  said  to  be  similar  to  trade-mark  cases, 
when  in  reality  the  general  principle  was  much  broader  than 
the  trade-mark  question,  and  the  facts  actually  showed  a  clear 
case  of  unfair  competition,  there  being  no  question  of  a  techni- 
cal trade-mark  of  any  sort  involved.  For  a  time  the  law  of 
unfair  competition  seemed  to  remain  undeveloped,  but  it  is 
now  realized  that  the  rules  of  technical  trade-mark  law  are 
confined  to  narrow  limits  while  those  of  the  law  of  unfair 
competition  are  sufficiently  basic  and  elastic  to  be  applied  to 
many  questions  beside  those  arising  out  of  trade-marks. 

The  relief  the  courts  now  give  does  not,  as  formerly,  rest  on 
the  theory  that  the  plaintiff  has  property  in  his  mark  or  name 
or  business,  but  on  the  broad  general  principle  that  one 
person  shall  not  by  use  of  any  mark,  symbol,  device  or  name 
or  in  any  other  way  pass  off  his  goods  as  those  of  another, 

23  Blofield  v.  Payne,  4  B.  &  Ad.  410-  2S  Singer  Mfg.  Co.  v.  Loog,  L.  R. 
1S33.                          -                                  8  App.  Cas.  15-1882,  at  p.  29. 

24  Edelsten  v.  Edelsten,  1  De  G.  J. 
&  S.  185-1S63. 


14  Unfair  Business  Competition. 

the  object  of  this  rule  being  to  protect  this  right  of  the 
plaintiff  to  the  profits  of  his  own  business  and  industry. 

The  case  of  /Singleton  v.  Bolton27  decided  in  1783  shows  the 
use  of  these  principles  at  an  early  date. 

§  8.  Early  Cases  Involving  Unfair  Competition. —  Judge 
Duer  in  Amoskeag  Mfg.  Co.  v.  Spear2s  founds  the  doctrine 
of  unfair  competition  on  these  cases :  Blofeld  v.  Payne,29 
Crawshay  v.  Thompson™  Knott  v.  Morgan?1  Croft  v.  Day.32 
They  are  given  below : 

Blofield  v.  Payne  was  an  action  on  the  case,  before  a  jury, 
for  damages,  decided  in  1833.  Plaintiff  made  hones,  which  he 
sold  wrapped  in  a  peculiar  envelope,  which  served,  he  alleged, 
to  distinguish  his  hones  from  other  kinds.  He  acquired  a 
great  reputation  for  the  quality  of  his  hones.  Defendant 
used  similar  wrappers  and  words  on  them  which  denoted  they 
were  of  the  plaintiff's  make.  Plaintiff  recovered  1  farthing 
damage;  and  on  appeal  the. verdict  was  upheld.  The  opinion 
was  in  substance  as  follows :  The  act  of  the  defendants  was 
a  fraud  against  the  plaintiff.  The  defendants  used  plaintiff's 
envelope  and  pretended  it  was  their  own;  they  had  no  right 
to  do  that,  and  the  plaintiff  was  entitled  to  recover  some  dam- 
ages in  consequence. 

Crawshay  v.  Thompson.™  The  gist  of  this  action  is  the  selling 
iron  made  by  the  defendants  as  and  for  iron  of  the  plaintiff 's 
manufacture ;  that  the  plaintiff  having  used  a  certain  mark  in 

27  3  Dougl.  293.  of  the  original  inventor,  and  no  evi- 
"  Thomas  Singleton,  the  plaintiff's  denee    was   given    of   the    defendant 
father,  sold  a  medicine  called  '  Dr.  having  sold  it  as  if  prepared  by  the 
Johnson's    Yellow    Ointment.'      The   "   plaintiff.     The  only  ground  on  which 
plaintiff,  after  his  father's  death,  con-  the  action  could  have  been  maintained 
tinued  to  sell  the  medicine,  marked  was  that  of  property  in  the  plaintiff, 
in   the   same   way.      The   defendant  which  was  not  pretended,  there  being 
also  sold  the  medicine,  with  the  same  no    patent,    nor   any   letters   of   ad- 
mark,  and  for  that  injury  the  present  ministration, 
action  was  brought.     *     *     *     Lord  "  Rule  discharged." 
Mansfield  said,  that  if  the  defendant  28  2  Sandf.  599-1849. 
had  sold  a  medicine  of  his  own,  under  20  B.  &  A.  410-1833. 
the    plaintiff's   name   or   mark,    that  30  4  Man.  &  Gr.  357-1842. 
would  be  a  fraud  for  which  an  ac-  S1  2  Keen  213-18^6. 
tion   would   lie.     But   here  both  the  82  7  Beav.  84-1843. 
plaintiff  and  defendant  use  the  name  "  4  Man.  &  Gr.  357-1842. 


What  is  Unfair  Competition?  15 

the  manufacture  of  his  iron,  the  defendants  knowingly  made 
and  sold  their  iron  with  a  mark,  imitating  that  used  by  the 
plaintiff,  in  order  to  denote  that  such  iron  was  manufactured 
by  the  plaintiff.  The  argument  in  effect  amounts  to  this,—  if 
the  defendants  sold  their  iron  as  and  for  the  plaintiff's,  what- 
ever may  have  been  their  motive  for  so  doing,  they  are  liable. 
The  opinion  was  in  part  as  follows : 

"  There  is  an  early  case  in  illustration  of  this  principle, 
cited  by  Doderidge,  J.,  in  Southern  v.  How,  to  this  effect,  as 
stated  in  Popham,  pp.  143-4.  'An  action  upon  the  case  was 
brought  in  the  Common  Pleas  by  a  clothier,  that,  whereas  he 
had  gained  great  reputation  for  his  making  of  his  cloth,  by 
reason  whereof  he  had  great  utterance,  to  his  great  benefit 
and  profit;  and  that  he  used  to  set  his  mark  to  his  cloth;  and 
another  perceiving  it,  used  the  same  mark  to  his  ill-made 
cloth  on  purpose  to  deceive  him ;  and  it  was  resolved  that  the 
action  did  well  lie.'  The  same  case  is  cited  also  in  Cro.  Jac. 
471 ;  but  it  is  there  said  that  the  action  was  brought  by  him 
who  bought  the  cloth ;  whereas,  in  Popham,  the  action  is  said 
to  have  been  brought  by  the  manufacturer,  and  the  gist 
of  the  action  appears  to  have  been  the  use  of  his  mark  '  on 
purpose  to  deceive.'  "  (id.  p.  385.) 

"  Can  it  be  contended  that  the  mere  use  of  a  similar  mark 
will  give  a  right  of  action?  I  do  not  know  that  a  man  can 
have  an  abstract  right  to  use  any  particular  mark;  but  long 
user  in  a  trade  of  a  mark  may  produce  a  general  impression 
that  goods  bearing  such  mark  are  of  a  particular  manufacture. 
The  notice  here,  although  it  was  argued  that  it  ought  to  have 
determined  the  case  in  favor  of  the  plaintiff,  cannot  alter  the 
legal  rights  of  the  parties.  Millington  v.  Fox,34  which  was 
relied  upon,  does  not  establish  that  doctrine.  What  is  the 
notice  here  ?  It  is  to  the  effect  that  the  defendants  were  using 
a  mark  similar  to  that  used  by  the  plaintiff.  But  such  a 
notice  is  not  equivalent  to  knowledge ;  as  the  defendants  might 
dispute  the  resemblance;  or  they  might  admit  the  resemblance, 
and  yet  insist  that  they  had  no  intention  of  passing  off  their 
goods  as  the  plaintiff's  "  (id.  3'86).35 

84  3  Myl.  &  Cr.  3S8vL838. 

85  Craicshay  v.   Thompson,  4  Man. 
&  Gr.  357-1842. 


1G  Unfair  Business  Competition. 

In  Knott  v.  Morgan,36  the  plaintiff  ran  a  conveyance  com- 
pany, which  marked  their  buses  "  Conveyance  Company  "  and 
"  London  Conveyance  Company."  Defendant  began  to  run 
over  route  used  by  plaintiff  a  bus  on  which  were  painted 
these  same  words  in  similar  characters  and  on  the  same  parts 
of  the  omnibuses,  and  he  also  imitated  the  livery  of  the 
plaintiff's  employees. 

M.  R.  "  I  have  not  the  least  doubt  that  the  defendant  did 
intend  to  induce  the  public  to  believe  that  the  omnibus  which 
he  painted  and  appointed,  so  as  to  resemble  the  carriages  of 
the  plaintiffs,  was,  in  fact,  an  omnibus  belonging  to  the  plain- 
tiffs. *  *  *  They  had  a  right  to  call  upon  this  court  to  re- 
strain the  defendant  from  fraudulently  using  precisely  the 
same  words  and  devices  which  they  have  taken  for  the  purpose 
of  distinguishing  their  property,  and  thereby  depriving  them 
of  the  fair  profits  of  their  business  by  attracting  custom  on 
the  false  representation  that  carriages,  really  the  defendant's, 
belong  to,  and  are  under  the  management  of,  the  plaintiffs." 
(id.  p.  219.) 

In  Croft  v.  Day,31  Day's  father  began  in  1801  with  one  Mar- 
tin to  make  blacking.  Day,  senior,  and  Martin  died  and 
Day's  executors,  one  of  whom  was  the  plaintiff,  carried  on  the 
business,  and  sought  to  prevent  defendant  from  making  black- 
ing. The  court  said  in  substance,  that  the  accusation  made 
against  this  defendant  is  that  he  is  selling  goods,  under  form 
and  symbols  of  such  a  nature  and  character  as  will  induce  the 
public  to  believe  that  he  is  selling  the  goods  which  are  manufac- 
tured at  the  manufactory  belonging  to  the  testator  in  this  case. 
"  It  has  been  very  correctly  said,  that  the  principle,  in  these 
cases,  is  this :  That  no  man  has  a  right  to  sell  his  own  goods 
as  the  goods  of  another.  You  may  express  the  same  principle 
in  a  different  form,  and  say  that  no  man  has  a  right  to  dress 
himself  in  colors,  or  adopt  and  bear  symbols,  to  which  he  has 
no  peculiar  or  exclusive  right,  and  thereby  personate  another 
person  for  the  purpose  of  inducing  the  public  to  suppose, 
either  that  he  is  the  other  person,  or  that  he  is  connected  with 
and  selling  the  manufacture  of  such  other  person,  while  he  is 

86  2  Keen  213-1836.  877  Beav.  84-1843. 


"What  is  Unfair  Competition?  17 

really  selling  his  own.  It  is  perfectly  manifest,  that  to  do 
these  things  is  to  commit  a  fraud,  and  a  very  gross  fraud. 
#  #  #  rpke  rig^  which  any  person  may  have  to  the  pro- 
tection of  this  court,  does  not  depend  upon  any  exclusive 
right  which  he  may  be  supposed  to  have  to  a  particular  name, 
or  to  a  particular  form  of  words.  His  right  is  to  be  protected 
against  fraud,  and  fraud  may  be  practiced  against  him  by 
means  of  a  name,  though  the  person  practicing  it  may  have  a 
perfect  right  to  use  that  name,  provided  he  does  not  accompany 
the  use  of  it  with  such  other  circumstances  as  to  effect  a  fraud 
upon  others. ' ' 

**  It  is  perfectly  manifest,  that  two  things  are  required 
for  the  accomplishment  of  a  fraud  such  as  is  here  contem- 
plated. First,  there  must  be  such  a  general  resemblance  of 
the  forms,  words,  symbols,  and  accompaniments  as  to  mis- 
lead the  public.  And,  secondly,  a  sufficient  distinctive  indi- 
viduality must  be  preserved,  so  as  to  procure  for  the  person 
lnmself  the  benefit  of  that  deception  which  the  general  resem- 
blance is  calculated  to  produce.  To  have  a  copy  of  the  thing 
would  not  do,  for,  though  it  might  mislead  the  public  in  one 
respect,  it  would  lead  them  back  to  the  place  where  they  were 
to  get  the  genuine  article,  an  imitation  of  which  is  improperly 
sought  to  be  sold.  For  the  accomplishment  of  such  a  fraud  it 
is  necessary,  in  the  first  instance,  to  mislead  the  public,  and 
in  the  next  place,  to  secure  a  benefit  to  the  party  practicing 
the  deception  by  preserving  his  own  individuality."  *  *  * 
"  My  decision  does  not  depend  upon  any  peculiar  or  exclusive 
right  the  plaintiffs  have  to  use  the  names  Day  and  Martin, 
but  upon  the  fact  of  the  defendant  using  these  names  in  con- 
nection with  certain  circumstances,  and  in  a  manner  calcu- 
lated to  mislead  the  public,  and  to  enable  the  defendanf  to 
obtain,  at  the  expense  of  Day's  estate,  a  benefit  for  himself, 
to  which  he  is  not,  in  fair  and  honest  dealings,  entitled.  Such 
being  my  opinion,  I  must  grant  the  injunction  restraining 
the  defendant  from  carrying  on  that  deception.  He  has  a 
right  to  carry  on  the  business  of  a  blacking  manufacturer 
honestly  and  fairly;  he  has  a  right  to  the  use  of  his  own  name; 
I  will  not  do  anything  to  debar  him  from  the  use  of  that,  or  any 
other  name  calculated  to  benefit  himself  in  an  honest  way; 


18  Unfair  Business  Competition. 

but  I  must  prevent  him  from  using  it  in  sucli  a  way  as  to 
deceive  and  defraud  the  public,  and  obtain  for  himself,  at 
the  expense  of  the  plaintiffs,  an  undue  and  improper  advan- 
tage."    (id.  p.  88-90.) 

Judge  Duer  might  also  have  named  the  case  of  Hogg  v. 
Kirby,38  decided  in  1803  by  Lord  Eldon,  which  clearly  lays 
down  the  fundamental  rules  of  the  law  we  now  know  as  the 
law  of  unfair  competition.  Hogg  was  publisher  of  the  "  Won- 
derful Magazine."  A  dispute  arose  as  to  altering  the  title 
of  it  and  Kirby  refused  to  allow  his  name  to  be  used  longer 
as  publisher.  Later,  plaintiff  issued  hand  bills  saying  he 
would  thereafter  publish  the  magazine  and  began  to  do  so. 
Thereupon  Kirby  and  another  began  to  publish  a  periodical 
under  a  similar  title  as  a  "  New  Series  Improved."  Plaintiff 
asked  that  defendants  be  enjoined  from  selling  their  publica- 
tion and  from  printing  any  future  number  under  the  same 
or  a  similar  title  or  using  the  design  of  plaintiff's  magazine 
and  an  account.  Lord  Eldon  said:  "  But  the  question  is, 
whether  he  has  not  published  this  work,  not  as  his  original 
work,  but  as  the  continuation  of  the  work  of  another  person. 
Then  what  is  the  consequence  in  law  and  equity?  If  that 
question  is  determined  in  the  affirmative,  a  court  of  equity 
in  these  cases  is  not  content  with  an  action  for  damages ;  for 
it  is  nearly  impossible  to  know  the  extent  of  the  damage ;  and 
therefore  the  remedy  here,  though  not  compensating  the  pe- 
cuniary damage  except  by  an  account  of  the  profits,  is  the 
best :  the  remedy  by  an  injunction  and  account."  (p.  223.)  "  In 
this  case,  protesting  against  the  argument,  that  a  man  is  not 
at  liberty  to  do  anything  which  can  affect  the  sale  of 
another  work  of  this  kind,  and  that,  because  the  sale  is 
affected,  therefore  there  is  an  injury  (for  if  there  is  a  fair 
competition  by  another  original  work,  really  new,  be  the 
loss  What  it  may,  there  is  no  damage  or  injury),  I  shall  state 
the  question  to  be,  not  whether  this  work  is  the  same,  but,  in 
a  question  between  these  parties,  whether  the  defendant  has 
not  represented  it  to  be  the  same ;  and  whether  the  injury  to 
the  plaintiff  is  not  as  great,  and  the  loss  accruing  ought  not  to 
be  regarded  in  equity  upon  the  same  principles  between  them, 

38  8  Vesey  Jr.  215. 


What  is  Unfair  Competition?  19 

as  if  it  was  in  fact  the  same  work.  Upon  the  point,  whether 
the  work  was  in  fact  meant  to  be  represented  to  the  public  as 
the  same,  I  do  not  say,  that  is  not  a  question  proper  for  a 
jury.  But  I  must  act  upon  the  inference  from  the  circum- 
stances ;  and  it  is  impossible  not  to  say,  till  this  is  better  ex- 
plained, an  intention  does  appear  both  upon  the  transaction 
as  to  the  fifth  number  and  the  other  circumstances,  in  some 
degree  upon  the  appearance  of  the  outside,  in  a  great  degree 
upon  the  first  page,  the  index,  and  the  promised  contents,  to 
state  tins  as  a  continuation  of  the  former  work,  in  a  new 
series  indeed.  I  am  not  here  to  speculate  upon  the  probable 
consequences  of  such  conduct;  for  I  have  the  actual  conse- 
quences, as  far  as  fair  reasoning  can  determine,  that  out  of 
2,000  purchasers  1,800  have  bought  this  as  part  of  the  old 
work.  The  point,  where  he  who  carries  his  work  into  the 
world  as  that  of  another  person,  shall  not  as  between  them  be 
considered  as  publishing  that  work,  if  the  consequences  are 
the  same,  is  new,  and  therefore  fit  to  be  discussed  else- 
where as  well  as  here.  I  must  incur  the  hazard  of  occasion- 
ing finally  some  injurious  consequences  to  one  party  or  the 
other  "  (id.  p.  225-6). 

§  9.  Law  of  Unfair  Competition  does  not  Curtail  Freedom 
of  Honorable  Trading. — All  this  law  of  unfair  competition 
might  seem  to  have  the  effect  of  limiting  the  rights  enjoyed  by 
all  men  to  trade  freely  with  each  other.  But  the  restric- 
tions imposed  by  it  are  not  imposed  upon  traders  alone,  but 
equally  on  all  other  citizens.  The  right  to  trade  is  not  an  ab- 
solute right,  but  a  qualified  one.  Whether  a  man  be  a  trader 
or  not  he  is  not  justified  in  damaging  another's  business  or 
profession  by  fraudulent  methods,  by  threats,  interference, 
with  contract,  libel  or  slander  of  goods,  obstruction,  or  unfair 
methods  of  any  sort.  It  is  the  policy  of  the  law  to  encourage 
fair  trade  in  every  way.  ' '  We  have  then  to  inquire  whether 
mere  competition,  directed  by  one  man  against  another,  is 
ever  unlawful.  It  was  argued  that  the  plaintiffs  have  a  legal 
right  to  carry  on  their  trade,  and  that  to  deprive  them  of  that 
right  by  any  means  is  a  wrong.  But  the  right  of  the  plaintiffs 
to  trade  is  not  an  absolute  but  a  qualified  right,  a  right  con- 


20  Unfair  Business  Competition. 

ditioned  by  the  like  right  in  the  defendants  and  all  Her  Ma- 
jesty's subjects,  and  a  right  therefore  to  trade  subject  to  com- 
petition. Now,  I  know  no  limits  to  the  right  of  competition  in 
the  defendants  —  I  mean,  no  limits  in  law.  I  am  not  speaking 
of  morals  or  good  manners.  To  draw  a  line  between  fair  and 
unfair  competition,  between  what  is  reasonable  and  unreason- 
able, passes  the  power  of  the  Court.  Competition  exists  when 
two  or  more  persons  seek  to  possess  or  to  enjoy  the  same 
thing :  it  follows  that  the  success  of  one  must  be  the  failure  of 
another,  and  no  principle  of  law  enables  us  to  interfere  with 
or  to  moderate  that  success  or  that  failure  so  long  as  it  is 
due  to  mere  competition.  I  say  mere  competition,  for  I  do  not 
doubt  that  it  is  unlawful  and  actionable  for  one  man  to  inter- 
fere with  another's  trade  by  fraud  or  misrepresentation,  or  by 
molesting  his  customers,  or  those  who  would  be  his  customers, 
whether  by  physical  obstruction  or  moral  intimidation."  39 

§  10.  Property  Rights  in  Marks  which  are  not  Technical 
Trade-marks.—  The  difference  most  often  noted  between 
technical  trade-mark  cases  and  those  involving  unfair  com- 
petition seems  to  rest  on  the  fact  that,  in  technical  trade-mark 
cases,  the  complainant  has  a  distinct  property  interest  in 
the  technical  mark,  while  in  cases  of  unfair  competition  he  is 
said  to  have  no  property  interest  in  that  which  the  defendant 
has  used  or  imitated  to  his  injury  or  damage.  Neverthe- 
less, he  has  defrauded  the  plaintiff  of  something,  and  that 
something  is  valuable.  A  name  may  be  public  property,  and 
yet,  if  someone  acquire  right  to  use  it  exclusively,  in  a  limited 
field  even,  that  right  is  valuable.  The  right  of  the  Saxon  vil- 
lager to  use  the  common  as  a  pasture  was  a  limited  right,  yet 
it  was  property. 

Where  the  complainant  is  adjudged  to  have  a  distinct  and 
sole  property  right  to  use  his  mark,  the  court  will  enjoin 
injury  to  it  regardless  of  the  intent  of  the  offender.  But 
where  his  mark  is  something  that  is  free  to  both  parties  to 
use,  as,  for  instance,  the  name  of  the  family  to  which  both 
belong,   and   which,   therefore,   cannot   be   the   complainant's 

39  Mogul  SS.  Co.  v.  McGregor,  Gow  &  Co.,  L.  R,  23  Q.  B.  59S-C25-1SS9. 


What  is  Unfair  Competition? 


21 


property  exclusively,  the  court  may  find  the  complainant  to 
possess  something  in  connection  with  that  name  which  it  must 
protect.  Many  judges  have  called  that  something  property, 
while  more  have  denied  it  to  be  property. 

This  intangible  interest  in  a  mark,  used  by  the  maker  or 
vendor  of  the  article  to  which  it  is  attached,  and  which  is 
protected  by  the  application  of  the  rules  of  unfair  competition, 
may  perhaps  be  termed  the  good-will  of  the  seller  in  ,such  a 
mark.  The  courts  seem  to  distinguish  this  right,  whatever  it 
be  called,  from  the  property  of  the  owner  of  a  technical  trade- 
mark in  that  mark,  although  the  good-will  in  a  trade  name 
or  mark,  not  a  technical  one,  would  seem  to  be  quite  analogous 
to  what  is  usually  termed  the  good-will  in  a  business  which  is 
undoubtedly  property.  For  instance,  in  the  case  of  American 
Washboard  Co.  v.  Saginaw  Mfg.  Co.,40  no  trade-mark  was  in 
question,  and  the  ground  of  the  injunction  issued  was  the  in- 
vasion of  the  plaintiff's' property  rights.41 

The  property  rights  in  a  particular  business  consist  in  part 
in  its  good-will  in  the  marks  used  on  its  goods,  in  its  stand 
or  locality,  in  its  name,  and  all  of  these  things  are  under  the 
protection  of  a  court  of  equity.42     These  features  were  valuable 


40 103  F.  R.  281-1900  (C.  C.  A.  6th 
Cir.);  50  L.  R.  A.  609. 

41  The  case  opens  with  the  specific 
statement  that  no  claim  "was  made  by 
the  plaintiff  that  it  possessed  a  tech- 
nical trade-mark.  "  Plaintiff  comes 
into  a  court  of  equity  in  such  a  case 
(viz.  unfair  competition)  for  the  pro- 
tection of  his  property  rights.  The 
private  action  is  given,  not  for  the 
benefit  of  the  public,  although  that 
may  be  its  incidental  effect,  but  be- 
cause of  the  invasion  by  defendant  of 
that  which  is  the  exclusive  property  of 
complainants"  (id.  284).  And  again 
the  court  said,  "  The  jurisdiction  of  a 
court  of  equity  to  restrain  wrongful 
use  of  such  trade-marks  by  persons 
not  entitled  thereto, -is  founded,  not 
upon  the  imposition  upon  the  public, 


but  on  the  wrongful  invasion  of  the 
right  of  property  therein  which  has 
been  acquired  by  others.  A  remedy 
is  offered  only  to  the  owner  of  the-, 
right  of  property  in  such  trade-marks 
on  account  of  the  injury  which  is, 
thus  done  to  him"   (id.  285). 

Leather  Cloth  Cc.  v.  Am.  Leather 
Cloth  Co.,  11  H.  L.  Cas.  523-1863. 
"  The  true  principle,  therefore,  would 
seem  to  be  that  the  jurisdiction  of  the 
court  in  the  protection  given  trade- 
marks rests  upon  property,  and  that 
the  court  interferes  by  injunction,  be- 
cause that  is  the  only  mode  by  which 
property  of  this  description  can  be 
effectually  protected." 

43  Hall  v.  Barrows,  9  Jurist,  N.  S.. 
483-1863;  4  De  G.  J.  &  S.  150. 


22  Unfair  Business  Competition. 

formerly,  but  now  they  may  sell  for  many  times  what  all  its 
personal  property  of  other  sorts  will  bring.  Their  value  is 
frequently  the  result  of  the  most  expensive  advertising,  and 
a  court  of  equity  protects  this  zealously  from  being  lost 
to  its  owner  through  unfair  methods.  "  Money  invested  in 
advertising  is  as  much  a  part  of  a  business  as  if  invested  in 
buildings  or  machinery,  and  when  the  goods  of  a  manufac- 
turer have  become  popular,  not  only  because  of  their  intrinsic 
worth,  but  also  by  reason  'of  the  ingenious,  attractive,  and  per- 
sistent manner  in  which  they  have  been  advertised,  the  good- 
will thus  created  is  entitled  to  protection  against  unfair  com- 
petition. ' ' 43  Eef erring  to  the  case  of  Millington  v.  Fox44  Lord 
Chancellor  Westbury  in  Hall  v.  Barrows,45  says:  "  The  case 
*  *  *  is  very  important  as  establishing  the  principle  that 
the  jurisdiction  of  the  court  in  the  protection  of  trade-marks 
rests  upon  property,  and  that  fraud  in  the  defendant  is  not 
necessary  for  the  exercise  of  that  jurisdiction."  Later  in  this 
opinion,  referring  to  plaintiff's  trade  name,  he  said  (p.  157) 
that  "  the  trade-mark  is  a  valuable  property  of  the  partner- 
ship *  *  *  and  may  be  properly  sold  with  the  works,  and, 
therefore,  properly  included  as  a  distinct  subject  of  value  in 
the  valuation  to  the  surviving  partner."  This  statement  was 
made  in  1863,  when  the  law  now  connected  with  "  technical 
marks  "  was  hardly  known. 

Blackburn  says  of  this  case:46  ''And  I  think  it  settled  by  a 
series  of  cases,  of  which  Hall  v.  Barrows41  is,  I  think,  the  lead- 
ing one,  that  both  trade-marks  and  trade  names  are  in  a  certain 
sense  property,  and  that  the  right  to  use  them  passes  with  the 
good-will  of  the  business  to  the  successors  of  the  firm  that 
originally  established  them,  even  though  the  name  of  that  firm 
be  changed  so  that  they  are  no  longer  strictly  correct.  This 
was  evidently  Lord  Cottenham's  opinion  in  Millington  v.  Fox4* 
and  I  know  of  no  authority  against  it."  A  trade  name  may 
be  either  the  name  of  the  manufacturer  of  goods  or  some  name 

"Hilson   Co.   v.   Foster,  80  F.    R.  "Singer  Mfg.   Co.  v.  Loog,  L.   R. 

896-1897   (C.  C.  S.  D.  N.  Y.).  8  App.  Cas.  15-33-1882. 

44  3  Myl.  &  Cr.  338-1838.  "  4  De  G.  J.  &  S.  150-1863. 

45  4  De  G.  J.  &  S.  150-56-1863.  "  3  Myl.  &  Cr.  338-1838. 


What  is  Unfair  Competition?  23 

by  which  the  manufactured  goods  have  become  generally 
known.  There  is  a  kind  of  property  in  such  a  name  and  inter- 
ference with  it  will  be  restrained  by  the  court  if  there  is  a 
prospect  of  injury  to  the  owner  of  it.49 

§  11.  Exclusive  Right  to  a  Name  or  Mark  not  Necessary  to 
Action. —  In  an  action  for  unfair  competition  it  is  not  necessary 
that  the  plaintiff  should  have  an  absolute  and  exclusive  right 
to  the  distinguishing  marks  which  he  alleges  the  defendant 
has  wrongfully  used.  The  defendant  may  be  properly  en- 
joined in  such  an  action,  although  undoubtedly  entitled  to  use 
the  name  or  mark  in  question,  provided  that  he  uses  it  in  such 
a  way  as  not  to  injure  the  complainant.  There  need  be  no 
exclusive  right  in  the  complainant.  A  definite  property  right 
may  arise  in  a  name  or  mark,  although  it  is  not  a  technical 
trade-mark.  This  right  is  qualified  and  not  exclusive,  but,  like 
the  rights  in  a  technical  mark,  is  valuable  in  a  very  real  sense. 
It  is  settled  law  that  the  right  to  use  a  technical  trade-mark 
is  not  a  privilege  attaching  only  to  the  person  first  using  it, 
but  an  actual  property  right,  capable  of  being  dealt  in  and  of 
being  transferred  as  property  from  person  to  person.50  This 
is  equally  true  of  names  and  marks  that  are  not  technical  trade- 
marks. A  dealer  has  acquired  valuable  interests  in  some  name, 
by  long  use  as  a  trade  name.  He  may  sell  such  right  as  he 
has  in  that  name  for  value  and  give  good  title.  If  another 
steals  his  business  by  using  a  similar  and  confusing  name,  his 
damage  is  none  the  less  real  because  his  mark  is  not  a  technical 
trade-mark.  To  protect  his  rights  he  needs  only  to  prove  his 
ownership  of  such  an  interest. 

§  12.  Property  Right  Which  is  Acquired  in  a  Trade-mark 
is  a  Limited  Right. —  Where  one  has  a  property  right  in 
a  name,  he  does  not  have  a  general  abstract  right  to  or 
ownership  in  that  name.  A  soap  manufacturer  cannot  com- 
plain of  one  who  uses  a  name  which  he  uses  in  the  soap  busi- 
ness as  a  name  of  a  brand  of  iron.50a    The  exclusive  use  of  a 

49  Citing     Borthwick     v.     Evening  50a  But  see  Walter  v.  Ashton,  71  L. 

Post,    37    Ch.    Div.    449-1888;    12      J.  Ch.  839-1902;  Eastman  v.  Grif- 
Eneye.    of    the    Laws    of    England,      fiths,  15  R.  P.  C.  105. 
234-5. 

60  Paul,    Trade-Marks,    §    17,    and 
cases  there  cited. 


24  Unfair  Business  Competition. 

name  to  which  one  is  entitled  has  been  held  to  apply  only  to 
nse  in  his  own  line  of  business.51 

§  13.  No  Distinction  Between  Names  and  Marks  as  Regards 
Rights  Acquired  by  User.— No  distinction  can  be  made  between 
a  trade-mark  and  a  trade  name  as  regards  the  rights  acquired 
in  either  by  usage.  Both  are  held  to  be  of  like  character  and 
will  be  protected  if  violated.52 

The  decisions  are  not  clear  as  to  the  character  of  these 
rights  in  trade  names,  labels,  signs,  places,  forms,  devices  and 
the  like,  which  are  protected  by  the  law  of  unfair  competition. 
Valuable  they  certainly  are;  property,  in  the  commonly  ac- 
cepted meaning  of  the  term,  they  certainly  are,  and  yet  equity 
courts  have  refused  to  protect  them  where  there  was  no  ground 
for  the  Court 's  jurisdiction  unless  it  be  based  on  this  property 
right.  It  is  believed,  however,  that  in  time  the  great  value  of 
these  interests  will  cause  all  courts  to  feel  warranted  in 
considering  them  such  property  as  equity  is  bound  to  protect. 

The  courts  in  early  days  held  that  rights  which  they  pro- 
tected as  trade-marks  were  rights  acquired  only  in  one  way, 
viz.,  by  user,  and  this  is  the  way  in  which  all  rights  and  prop- 
erty now  jorotected  by  the  rules  of  unfair  competition  are 
acquired.  These  rights  founded  on  user  were  regarded  as 
property  and  protected  as  such.53 

61  Hall  v.  Barrows,  4  De  G.  J.  &  S.  tiffs  and  their  predecessors  in  in- 
150-1863.  The  Omega  Oil  Co.  v.  terest  have  acquired  property  rights 
Weschler,  53  Misc.  (N.  Y.)  441.  in   the  use   of  the  word   which   de- 

62  Hainque  v.  Cyclops  Iron  Works,  f endant  is  bounc  to  respect " 
136  Cal.  351-1902;  68  Pac.  1014.  53  Glen  &  Hall  Mfg.  Co.  v.  C.  S. 
Plaintiffs,  for  years,  called  them-  Hall,  61  N.  Y.  226-1874.  In  con- 
selves  "  Cyclops  Machine  Works."  sideling  the  rights  of  a  trader  to  the 
Defendants  set  up  near  by,  calling  address  "  No.  10  South  Water  Street, 
themselves  "  Cyclops  Iron  Works."  Rochester,  N.  Y.,"  the  New  York 
"  Upon  general  principles  of  equity,  Court  of  Appeals  said :  "  It  would 
the  acts  of  the  defendants  here  de-  follow,  from  these  principles,  that  if 
tailed  will  not  be  countenanced  by  a  person  had  established  a  business 
the  courts.  If  it  be  conceded  that  at  a  particular  place,  from  which  he 
the  word  '  Cyclops '  in  this  particu-  had  derived,  or  may  derive,  profit, 
lar  instance  is  the  trade  name  of  and  has  attached  to  that  business 
plaintiffs  rather  than  their  trade-  a  name  indicating  to  the  public 
mark,  that  fact  is  not  material.  By  where  or  in  what  manner  it  is  car- 
long  continued  exclusive  user,  plain-  ried  on,  he  has  acquired  a  property 


What  is  Unfair  Competition?  25 

Long  use  does  not  always  give  rights  in  a  name  or  mark. 
Although  Ames  began  in  1856  to  use  the  name  "  Collins,' ' 
as  a  name  for  his  concern,  because  of  the  reputation  of  a  rival 
named  "  Collins,"  he  will,  even  in  1886,  be  enjoined  from 
in  the  first  instance  for  the  express  purpose  of  profiting  by 
continuing  such  use,  because  of  the  fact  that  he  took  the  name 
Collins'  reputation  and  without  right.54 

§  14.  Definitions  of  Unfair  Competition. —  The  following  are 
various  statements  of  the  courts  as  to  what  unfair  competition 
is.  These  citations  do  not  cover  the  ground  fully,  for  this 
doctrine  of  law,  as  has  been  said,  is  not  stable;  it  is  continually 
being  applied  to  new  wrongs,  continually  being  invoked  to  right 
injuries  that  arise  from  new  combinations  of  circumstances 
which  work  injury  and  fraud.  The  fundamental  rule  is  that 
one  man  has  no  right  to  palm  off  his  own  goods  as  the  goods 
of  a  rival  trader,  and  ' '  he  cannot,  therefore, ' '  in  the  language 
of  Lord  Langdale  in  Perry  v.  Truefitt,55  "  be  allowed  to  use 
names,  marks,  letters,  or  other  indicia,  by  which  he  may  induce 
purchasers  to  believe  that  the  goods  which  he  is  selling  are  the 
manufacture  of  another  person."  Referring  to  the  above, 
Lord  Herschell,  in  Reddaway  v.  Banham,5G  said:  "  It  is,  in 
my  opinion,  this  fundamental  rule  which  governs  all  cases." 

"  Irrespective  of  the  technical  question  of  trade-mark,  the 
defendants  have  no  right  to  dress  their  goods  up  in  such  man- 
ner as  to  deceive  an  intending  purchaser,  and  induce  him  to 
believe  he  is  buying  those  of  the  plaintiffs.  Rival  manufactur- 
ers may  lawfully  compete  for  the  patronage  of  the  public  in 
the  quality  and  price  of  their  goods,  in  the  beauty  and  taste- 
fulness  of  their  inclosed  packages,  in  the  extent  of  their  ad- 
vertising, and  in  the  employment  of  agents,  but  they  have  no 
right,  by  imitative  devices,  to  beguile  the  public  into  buying 
their  wares  under  the  impression  they  are  buying  those  of 
their  rivals."  5T 

in  the  name  which  will  be  protected  Sons'    Corporation,    18    F.    R.    561- 

from  invasion  by  a  court  of  equity,  1882   (Cir.  Ct.  So.  Div.  N.  Y.). 

on     principles     analogous    to     those  55  6  Beav.  66-73-1842. 

which  are  applied  in  case  of  the  in-  M  1896-App.   Cas.  199-209. 

vasion  of  a  trade-mark  "  (id.  p.  231).  "  Coats  v.  Merrick  Thread  Co.,  149 

"Collins    Co.    v.    Oliver    Ames    &  U.  S.  562-1892,  at  p.  566;  37  L.  Ed. 


26  Unfair  Business  Competition. 

"  The  essence  of  a  wrong  in  unfair  competition  consists  in 
the  sale  of  the  goods  of  one  manufacturer  or  vendor  for  those 
of  another,  and  if  defendant  so  conducts  its  business  as  not 
to  palm  off  its  goods  as  those  of  complainant  the  action 
fails."58 

"An  act  of  competition,  otherwise  unobjectionable,  done,  not 
for  the  purpose  of  competition  but  with  intent  to  injure  a 
rival  in  his  trade,  is  not  an  act  done  in  an  ordinary  course  of 
trade,  and  therefore  is  actionable  if  injury  ensue."  59 

"  Everyone  has  the  right  to  use  and  enjoy  the  rays  of 
the  sun,  but  no  one  may  lawfully  focus  them  to  burn  his  neigh- 
bor's house.  *  *  *  Everyone  has  the  right  to  use  pen 
and  paper,  but  no  one  may  apply  them  to  the  purpose  of  de- 
frauding his  neighbor  of  his  property,  or  making  counterfeit 
money,  or  of  committing  forgery. ' ' 60 

"  Competition  in  business  is  justifiable  and  desirable;  but 
a  business  built  up  by  one  man  by  the  use  of  peculiar  pack- 
ages and  names,  should  not  be  appropriated  by  another  by 
contrivances  which,  although  not  strictly  within  the'  rules  of 
liability,  yet  are  designed  to  accomplish  a  purpose  equally 
injurious.  Persons  thus  situated  are  not  regarded  with  favor 
by  a  court  of  equity. ' ' 61 

"  If  the  same  evil  results  are  accomplished  by  the  acts  prac- 
ticed by  this  defendant  which  would  be  accomplished  by  an 
adoption  of  plaintiff's  name,  why  should  equity  smile  upon 
the  one  practice  and  frown  upon  the  other?  Upon  what 
principle  of  law  can  a  court  of  equity  say,  if  you  cheat  and 
defraud  your  competitor  in  business  by  taking  his  name,  the 
court  will  give  relief  against  you,  but  if  you  cheat  and  defraud 
him  by  assuming  a  disguise  of  a  different  character  your  acts 
are  beyond  the  law?    Equity  will  not  concern  itself  about  the 

847;  13  Sup.  Ct.  966.    See  also  Den-  SS.    Co.  v.  McGregor,   Gow   &   Co., 

nison  Mfg.  Co.  v.  Thomas  Mfg.  Co.,  L.  R,  23  Q.  B.  D.  598-609-1889. 

94  F.  R.  651-1899  (C.C.Del.).  "Shaver   v.    Heller    &    Merz    Co., 

58  Howe  Scale  Co.  v.  Wijckoff,  Sea-  108  F.   R.  821-825-1901   (C.  C.  A. 
mans    &    Benedict,   198   U.    S.   118-  8th  Cir.) ;  65  L.  R.  A.  878. 
140-1905;  49  L.  Ed.  972;  25  Sup  Ct.  61  Church,  J.,  in  Wolfe  v.  Burke,  56 
609.  N.  Y.  115-122-1874. 

59  Lord  Esher   (dissenting),  Mogul 


What  is  Unfair  Competition?  27 

means  by  which  fraud  is  done.  It  is  the  results  arising  from 
the  means,  it  is  the  fraud  itself,  with  which  it  deals."  "  The 
foregoing  principles  of  law  do  not  apply  alone  to  the  protec- 
tion of  parties  having  trade-marks  and  trade  names.  They 
reach  away  beyond  that,  and  apply  to  all  cases  where  fraud  is 
practiced  by  one  in  securing  the  trade  of  a  rival  dealer;  and 
these  ways  are  as  many  and  as  various  as  the  ingenuity  of 
the  dishonest  schemer  can  invent. ' ' M 

"  The  modes  in  which  goods  may  be  passed  off  as  and  for 
the  plaintiff's  vary.  The  most  usual  is  where  a  particular 
mark  on  the  goods  or  on  the  packages  in  which  they  are  sold 
has  been  used  to  denote  that  they  are  made  by  a  particular 
firm  to  such  an  extent  that  it  is  understood  in  the  market  to 
bear  that  meaning.  The  law  as  to  those  trade-marks  is  now 
regulated  by  statutes,  but  before  there  was  any  legislation  on 
the  subject  it  was  well  settled  that  when  anyone  adopted  a 
mark  so  closely  resembling  the  trade-mark  of  the  plaintiff 
that  it  would  be  likely  to  be  mistaken  for  it,  and  put  it  on  his 
goods  and  sold  them,  knowing  that  though  the  persons  to 
whom  he  sold  them  were  well  aware  that  they  were  not  the 
plaintiff's  make,  yet  that  they  were  meant  to  be  sold  to  others 
who  would  see  only  the  trade-mark,  and  were  likely  to  be  de- 
ceived by  its  resemblance  to  that  of  the  plaintiff,  he  might 
be  properly  found  to  have  knowingly  and  fraudulently  sold 
the  goods  as  and  for  the  plaintiff's  goods:63  And,  so  far, 
there  was  no  difference  between  law  and  equity.  But  at  law 
it  was  necessary  to  prove  that  an  injury  had  been  actually 
done.  In  equity  it  was  enough  to  show  that  the  defendant 
threatened  to  do,  and  would,  if  not  prevented,  do  that  injury. ' ' 
*  #  #  #  a  There  is  another  way  in  which  goods  not  the 
plaintiff's,  may  be  sold  as  and  for  the  plaintiff's.  A  name 
may  be  so  appropriated  by  user,  as  to  come  to  mean  the  goods 
of  the  plaintiff,  though  it  is  not,  and  never  was,  impressed 
on  the  goods  or  on  the  packages  in  which  they  are  contained, 
so  as  to  be  a  trade-mark,  properly  so  called,  or  within  the 

63  Weinstock,     Lubin     &      Co.     v.  M  Citing  Sykes  v.  Sykes,  3  B.  &  C. 

Marks,    109    Cal.    529-40-1895;    42      541-1824. 
Pae.  142;  30  L.  R.  A.  182. 


28  Unfair  Business  Competition. 

recent  statutes.  "Where  it  is  established  that  such  a  trade 
name  bears  that  meaning,  I  think  the  use  of  that  name,  or  one 
so  nearly  resembling  it  as  to  be  likely  to  deceive,  as  applicable 
to  goods  not  the  plaintiff's,  may  be  the  means  of  passing  off 
those  goods  as  and  for  the  plaintiff's,  just  as  much  as  the 
use  of  a  trade-mark;  and  I  think  the  law  (so  far  as  not  altered 
by  legislation)  is  the  same."64 

"  He  (competitor  in  business)  must  not,  by  any  deceitful  or 
other  practice,  impose  on  the  public,  and  he  must  not  by 
dressing  himself  in  another  man's  garments,  and  by  assuming 
another  man's  name,  endeavor  to  deprive  that  man  of  his  own 
individuality  and  thus  despoil  him  of  the  gains  to  which,  by 
his  industry  and  skill,  he  is  fairly  entitled."  65 

"  If  a  person  had  established  a  business  at  a  particular 
place,  from  which  he  has  derived,  or  may  derive,  profit,  and 
has  attached  to  that  business  a  name  indicating  to  the  public 
where  or  in  what  manner  it  is  carried  on,  he  has  acquired  a 
property  in  the  name  which  will  be  protected  from  invasion 
by  a  court  of  equity,  on  principles  analogous  to  those  which 
are  applied  in  case  of  the  invasion  of  a  trade-mark."66 

"  Unfair  competition  consists  essentially  in  the  conduct  of 
a  trade  or  business  in  such  a  manner  that  there  is  an  express 
or  implied  representation  that  the  goods  or  business  of  the 
one  man  are  the  goods  or  business  of  another."  67 

"  The  imitation  of  the  index  sheets  would  deceive  the  ordi- 
nary purchaser,  and  the  appellee  had  a  purpose  that  such 
effect  should  result.  This  constitutes  unfair  competition,  not- 
withstanding that  the  merchant  purchasing  from  the  manufac- 
turer may  not  have  been  deceived."  w 

"  Unfair  competition  may  be  defined  as  passing  off,  or  at- 
tempting to  pass  off,  upon  the  public  the  goods  or  business  of 
one  man  as  being  the  goods  or  business  of  another. ' ' 69 

"  Notwithstanding  plaintiff  had  no  real  or  legal  trade-mark, 

M  Singer  Mfg.  Co.  v.  Laog,  L.  R.  fl7  28  Am.  &  Eng.  Eneyc.  345,  2d 

8  App.  Cas.  15-30-32-1882.  es  Globe  Wernicke  Co.  v.  Brown  & 

"Howard  v.  Henriques,  3  Sandf.  Besly,  121  F.  R.  90-1902,  at  p.   92 

(N.  Y.)   725-27-1851.  (C.  C.  A.  7th  Cir.). 

"Harper  v.   Pearson,  3  L.   T.   N.  69  28  Am.   &  Eng.  Eneyc.   409,  2d 

S.  547-49-1861.  ed. 


What  is  Unfair  Competition!  29 

if  the  defendant  had  intentionally  simulated  the  peculiar 
device  or  symbol  employed  by  plaintiff  on  his  labels,  and  such 
simulation  was  calculated  to  deceive  ordinarily  prudent  per- 
sons, and  did  deceive  such  persons,  the  plaintiff  would  be 
entitled  to  protection  against  the  consequence  of  such  decep- 
tion, not  because  of  his  device  or  symbol  being  a  trade-mark 
in  the  legal  sense  of  that  term,  but  because  of  the  fraud  and 
deception  practiced  by  the  defendant  upon  the  plaintiff  and 
the  public."70 

"  La  concurrence  deloyale  c'est  l'acte  pratique  de  mauvaise 
foi  a  l'effet  de  produire  une  confusion  entre  les  produits  de 
deux  fabricants,  ou  de  deux  commergants,  ou  qui,  sans  pro- 
duire de  confusion,  jette  le  discredit  sur  un  etablissement 
rival."71 

If  another  definition  of  unfair  business  competition  may  be 
attempted,  it  may  be  said  to  be  the  use  in  business  competi- 
tion, of  rights,  property  or  powers,  which  may  or  may  not 
ordinarily  be  susceptible  of  exclusive  appropriation  by  one 
individual,  in  such  a  way  as  to  injure  another  by  misrepresen- 
tation, deceit,  dishonesty,  or  fraud  and  usually  with  intent 
so  to  do. 

Unfair  competition  in  the  sense  in  which  it  is  most  often  used, 
is  a  question  of  representation  —  representing  one  person's 
goods  to  be  those  of  another  and  similar  false  representations. 
In  England  the  term  "  Passing  Off  "  is  practically  confined 
to  this  sort  of  unfair  competition.  The  latter  term  is  not  used 
there. 

It  is  held  in  France  that  unfair  competition  may  arise  with- 
out confusion  between  merchandise  or  business  concerns,  as 
where  a  merchant  attributes  to  himself  qualities,  titles  or 
rewards  which  he  never  actually  obtained  for  himself.72  This 
is  a  meaning  of  the  term  which  is  recognized  here,  now  and 
then,  by  the  public  press,  but  not  by  courts. 

,0  Alff  &    Co.   v.   Radam,  77   Tex.  des   Marques   de   Fabrique  et   de   la 

530-41-1890;  14  S.  W.  164;  9  L.  R.  Concurrence  Deloyale.     Paris,   1906, 

A.  145n;  affirmed,  81  Tex   122-1891;  §  459. 

16  S.  W.  990.  72  Pouillet   Traite   des   Marques   de 

71  Darras,  cited  by  Pouillet  Traite  Fabrique,  etc.  Paris,  1906,  §  675. 


30  Unfair  Business  Competition. 

The  term  is  coining  to  have  here  a  colloquial  meaning  as  a 
name  for  all  kinds  of  commercial  trickery  and  fraudulent 
methods.  In  the  New  York  Times  of  September  10,  1908,  the 
following  head  lines  appeared:  "  Standard  Oil  Co.  denies 
Trickery  —  Agents  testify  *  *  *  that  they  resorted  to  no 
Unfair  Competition." 

§  15.  Selling  Another's  Goods  as  One's  Own. —  The  ma- 
jority of  unfair  competition  cases  are  instances  of  attempts 
by  the  defendant  to  pass  off  his  goods  as  those  of  his  rival. 
There  are  cases,  however,  of  attempts  of  defendants  to  pass 
off,  not  their  goods  as  those  of  the  rival,  but  the  rival's  goods 
as  their  goods  and  goods  of  third  persons  as  the  goods  of  the 
plaintiff.  These  are  just  as  much  cases  of  unfair  competition 
—  passing  off  cases  —  as  the  more  common  sort. 

§  16.  Grounds  of  the  Action  for  Unfair  Competition. — 
Fraud  is  a  basis  of  actions  for  unfair  competition.  That  has 
been  demonstrated  beyond  a  doubt  by  many  cases.  It  is  not 
so  clear,  however,  just  who  it  is  the  Court  aims  to  protect 
from  fraud.  An  attempt  to  pass  off  goods  fraudulently  is 
discovered  to  the  Court:  is  it  set  in  motion  by  its  abhorrence 
of  dishonesty  and  double  dealing  or  does  it  feel  called  upon  to 
protect  the  interests  —  his  property  —  of  the  complainant 
or  does  it  feel  that  it  is  its  duty  to  first  preserve  the  pur- 
chasing public  from  deception,  or  does  it  act  in  such  a  case  be- 
cause of  all  these  reasons'?  The  following  are  the  principal 
grounds  usually  given :  First,  That  the  court  acts  to  promote 
honest  and  fair  dealing;  Second,  That  the  aim  of  the  court 
is  to  protect  the  purchasing  public ;  Third,  That  the  court  aims 
to  protect  not  public  rights  but  the  rights  of  individuals. 

§  17.  Theory  that  the  Court  Acts  to  Promote  Honest  and 
Fair  Dealing. — Again  courts  have  said  that  unfair  competition 
rests  on  the  theory  that  a  court  is  in  duty  bound  to  protect 
and  promote  honesty  and  fair  dealing.  "  The  ground  on  which 
the  jurisdiction  of  equity  in  such  cases  is  rested,  is  the  promo- 
tion of  honesty  and  fair  dealing,  because  no  one  has  a  right  to 
sell  his  own  goods  as  the  goods  of  another.  '  It  is  perfectly 
manifest,'  said  Lord  Langdale, '  that  to  do  this  is  a  fraud  and  a 
very  gross  fraud.'  " 73 

73  Palmer    v.    Harris,    60    Pa.    St.    156-1869,  at  p.  159. 


What  is  Unfair  Competition?  31 

§  18.  Theory  that  the  Court  Aims  to  Protect  the 
Purchasing  Public. —  The  early  English  cases  assigned 
fraud  on  the  purchasing  public  as  the  ground  on  which 
equity  would  relieve.  Fraud  on  the  public  to  the  detriment 
of  the  plaintiff  was  the  foundation  of  the  right  to  damages  at 
common  law,  according  to  Lord  Blackburn  in  Singer  Manu- 
facturing Co.  v.  Loog;74  and  as  long  ago  as  1838,  it  was  de- 
cided in  Millington  v.  Fox,75  that  intentional  deceit  was  not 
essential  to  warrant  an  equity  court  in  granting  an  injunction, 
but  that  the  court  will  interfere  to  protect  a  plaintiff,  if  ordi- 
nary or  unwary  purchasers  are  likely  to  be  misled  to  mistake 
the  defendant's  goods  for  the  plaintiff's.  Nothing  can  be  more 
emphatic  on  this  point  than  the  judgment  in  Singer  Machine 
Manufacturers  v.  Wilson;7'6  where  it  was  held  that  in  cases  of 
this  description,  the  probability  of  misleading,  not  experts  or 
persons  who  know  the  real  facts,  but  ordinary  or  unwary 
customers,  is  the  mischief  to  be  guarded  against.  This  point 
was  recognized  in  1824  in  Sykes  v.  Syhes.71  In  the  Singer 
Manufacturing  Co.  v.  Loog7S  Lord  Selborne,  commenting  on 
the  brass  plate  at  one  time  used  by  the  defendant  in  that  case, 
held  that  persons  may  be  misled  and  may  mistake  one  class  of 
goods  for  another,  although  they  do  not  know  the  names  of  the 
makers  of  either. 

"  To  justify  a  court  of  equity  in  interfering,  there  must  be 
something  more  than  the  mere  duplication  by  the  one  party  of 
the  other's  trade  name.  This  is  found  in  the  deceptive  use  of 
imitative  methods  of  display,  or  other  devices  by  which  the 
public  are  led  into  buying  the  infringer's  goods  when  they  in- 
tended to  buy  those  of  the  original  producer.  The  fraud  which 
is  thus  perpetrated  is  a  legitimate  ground  for  equitable  inter- 
ference, and  is  the  practical  basis  for  it  "79  (id.  p.  209). 

"  The  grounds  on  which  unfair  competition  in  trade  will 
be  enjoined  are  either  that  the  means  used  are  dishonest,  or 
that,  by  false  representation  or  imitation  of  a  name  or  device, 
there  is  a  tendency  to  create  confusion  in  the  trade,  and  work 

74  L.  R,  8  App.  Cas.  15-1882.  78  8  App.  Cas.  IS. 

16  3  Myl.  &  Cr.  338.  79  Draper   v.    Skerrett,   116    F.    R. 

76  3  App.  Cas.  376-391-2-1877.  206-1907  (C.  C.  E.  D.  Pa). 

"3  B.  &  C.  541-1S24. 


32 


Unfair  Business  Competition. 


a  fraud  upon  the  public,  by  inducing  it  to  accept  a  spurious 
article.  Where  these  grounds  are  absent,  and  no  trade-mark 
rights  exist,  injunction  does  not  lie  "  (head  note).80 

The  multitudes  of  ignorant  and  unwary  should  be  regarded 
in  considering  the  interest  of  traders  who  may  be  injured  by 
the  mistakes  of  purchasers.  If  one  adopts  a  name,  which 
has  been  appropriated  by  another,  he  must  use  it  with  such  pre- 
cautions that  the  reasonable  probability  of  deceit  of  purchasers 
will  be  avoided.81 

As  between  rival  claimants  to  the  right  to  reproduce  a  drama 
or  play,  while  the  author  and  he  to  whom  it  was  sold  were 
entitled  to  protection,  it  was  held  that  the  public  were  entitled 
to  be  honestly  informed  as  to  who  was  playing  it,  that  they 
might  not  confuse  the  play  in  question  with  a  poor  imitation.82 

Honest  competition  relies  on  the  intrinsic  merits  of  the 
goods.  It  does  not  require  a  false  or  fraudulent  mark.  To 
give  to  the  product  of  what  is  claimed  to  be  superior  skill,  the 
name,  similitude  and  imitation  of  an  article  with  which  it 
profess-es  to  compete  is  fraud.  The  public  should  not  be 
obliged  to  guard  against  such  methods. 


80  Vitascope  Co.  v.  U.  S.  Phono- 
graph Co.,  83  F.  R.  30-1897  (C.  C. 
N.  J.). 

S1  Singer  v.  Wilson,  3  App.  Cas. 
376-1877.  Powell  v.  Birmingham 
Vinegar  Brewery  Co.,  (1S96)  2  Ch. 
54.  Lord  Kay :  "  It  was  argued  that 
the  defendant  had  nothing  to  do  with 
the  deception  of  the  public.  The 
answer  is  obvious.  Every  person 
who,  intending  to  buy  a  bottle  of  the 
plaintiff' s  sauce,  gets  instead  a  bottle 
of  the  defendants ',  is  a  customer 
taken  from  the  plaintiff  by  this  de- 
ceit; and  if  this  is  extensively  done 
the  damages  to  the  plaintiff's  trade 
would  be  serious"  (p.  83). 

82  Hopkins  Amusement  Co.  v. 
Frohman,  103  111.  App.  613-1902. 
Frohman  and  Gillette  put  on  the  stage 
a    play    called    "  Sherlock    Holmes/' 


Appellant  attempted  to  play  a  piece 
called  "  Sherlock  Holmes,  Detective." 
Held,  names  of  publications  may  be 
protected  by  trade-mark  (citing 
Robertson  v.  Berry,  50  Md.  591- 
1878).  "Sherlock  Holmes,"  the 
drama,  has  not  been  copyrighted. 
Its  authors  and  Frohman  as  their 
grantee  have  right  to  protection  on 
the  ground  of  their  property  in  it 
(citing  McLean  v.  Fleming,  96  U. 
S.  245-1877;  24  L.  Ed.  828).  Froh- 
man owned  exclusive  right  to 
produce  this  play  by  contract  with 
the  author.  One  seeing  advertise- 
ment of  "  Sherlock  Holmes,  Detec- 
tive "  would  suppose  it  the  same  as 
Frohman's  play.  The  public  are  en- 
titled to  protection  as  well  as  Froh- 
man. 


What  is  Unfair  Competition'?  33 

"  A  disguise  is  not  usually  assumed  for  an  honest  object. 
It  is  a  mark  more  characteristic  of  deception  and  fraud.  It 
defeats  the  very  end  and  object  contemplated  by  legitimate 
competition  —  the  choice  to  the  public  to  select  between  the 
articles  exposed  to  sale  —  and  operates  as  a  deception  and  im- 
position on  the  dealer.  It  is  to  prevent  such  a  course  of  trans- 
action and  dealing  that  the  interposition  of  the  Court  of  Chan- 
cery is  asked,  and  I  have  no  doubt  it  is  within  its  proper  juris- 
diction to  restrain  a  proceeding  of  such  a  character  by  in- 
junction."83 

"  The  doctrine  of  unfair  competition  is  possibly  lodged 
upon  the  theory  of  the  protection  of  the  public  whose  rights 
are  infringed  or  jeopardized  by  the  confusion  of  goods  pro- 
duced by  unfair  methods  of  trade  as  well  as  upon  the  right  of 
a  complainant  to  enjoy  the  good-will  of  a  trade  built  up  by  his 
efforts  and  sought  to  be  taken  from  him  by  unfair  methods. ' '  ** 

§  19.  Theory  that  the  Court  aims  to  Protect,  not  Public 
Rights,  but  Rights  of  Individuals. —  The  theory  that  it  is  the 
duty  of  the  Court  to  protect  the  public  is  not  universally  held. 
In  many  jurisdictions  it  has  been  considered  that  the  Court 
should  be  concerned  with  the  personal  rights  of  the  plaintiff 
and  not  those  of  the  general  public.  The  private  action  is 
given,  not  for  the  benefit  of  the  public,  although  that  may  be 
its  incidental  effect,  but  to  relieve  against  the  invasion,  by 
the  defendant,  of  the  exclusive  rights  of  complainant.  "  The 
bill  here  loses  sight  of  the  thoroughly  established  principle 
that  the  private  right  of  action  in  such  cases  is  not  based  upon 
fraud  or  imposition  upon  the  public,  but  is  maintained  solely 
for  the  protection  of  the  property  rights  of  complainant."85 

Here  is  seen  the  effect  of  the  denial  that  the  interest  of  the 
complainant  is  property.  If  that  interest  be  considered  prop- 
erty, there  is  little  question  as  to  the  right  of  the  Court  to  act. 

Chancellor  Westbury  differentiates,  in  this  connection,  cases 
where  the  defendant  imitates  the  plaintiff's  goods  and  thus 

83  Taj/lor    v.    Carpenter,    2    Sandf.  Cement  Co.,  130  F.  R.  703-705-1904 

Ch.    676-1845;   Drake  Medicine    Co.  (C.  C.  A.  7th  Cir.). 

v.    Glessner,   68   Ohio   St.    337-1903;  "American     Washboard     Co.     v. 

67  N.  E.  722,  62. L.  R.  A.  94.  Saginaw  Mfg.   Co.,  103  F.  R.  281- 

81 G.    W.    Cole    Co.    v.    American  1900;  50  L.  R.  A.  609. 
3 


34  Unfair  Business  Competition. 

causes  mistakes  on  the  part  of  buyers,  and  those  cases  where 
this  feature  is  not  present.  He  says:  "  It  is,  indeed,  true 
that,  unless  the  mark  used  by  the  defendant  be  applied  by  him 
to  the  same  kind  of  goods  as  the  goods  of  the  plaintiff,  and  be 
in  itself  such  that  it  might  be  and  is  mistaken  in  the  market 
for  the  trade-mark  of  the  plaintiff,  the  Court  will  not  interfere, 
because  there  is  no  invasion  of  the  plaintiff's  right;  and  thus 
the  mistake  of  buyers  in  the  market,  under  which  they,  in  fact, 
take  defendant's  goods  as  the  goods  of  the  plaintiff  —  that  is 
to  say,  imposition  on  the  public  —  becomes  the  test  of  the  prop- 
erty in  the  trade-mark  having  been  invaded  and  injured. 
*  *  *  The  true  principle,  therefore,  would  seem  to  be  that 
the  jurisdiction  of  the  Court  in  the  protection  of  given  trade- 
marks rests  upon  property,  and  that  the  Court  interferes  by 
injunction,  because  that  is  the  only  mode  by  which  property 
of  this  description  can  be  effectually  protected.  The  same 
things  are  necessary  to  constitute  a  title  to  relief  in  equity  in 
the  case  of  the  infringement  of  a  right  to  trade-mark  as  in 
the  case  of  the  violation  of  any  other  right  of  property."86 
"  When  one  has  established  a  trade  or  business  in  which  he  has 
used  a  particular  device,  symbol,  or  name  so  that  it  has 
become  known  in  trade  as  a  designation  of  such  person's  goods, 
equity  will  protect  him  in  the  use  thereof.  Such  person  has  a 
right  to  complain  when  another  adopts  this  symbol  or  manner 
of  marking  his  goods  so  as  to  mislead  the  public  into  purchas- 
ing the  same  as  and  for  the  goods  of  the  complainant.  Plain- 
tiff comes  into  a  Court  of  Equity  in  such  case  for  the  pro- 
tection of  his  property  rights.  The  private  action  is  given, 
not  for  the  benefit  of  the  public,  although  that  may  be  its  in- 
cidental effect,  but  because  of  the  invasion  by  defendant  of 
that  which  is  the  exclusive  property  of  complainant.  In  Canal 
Co.  v.  Clark,87  the  Court  said:  '  It  is  invariably  held  that  the 
essence  of  the  wrong  consists  in  the  sale  of  the  goods  of  one 
manufacturer  or  vendor  as  those  of  another.'  " 88 

**  Leather    Cloth    Co.    v.    American  8S  American      Washboard     Co.      v. 

Leather  Cloth  Co.,  4  De  G.  J.  &  S.  Saginaw  Mfg.  Co.,  50  L.  R.  A.  609  > 
137-41-42;  11  H.  L.  Cas.  523.  103  F.  R.  281-84-1900. 

"15    Wall.    311-1871;    80    U.    S. 
311;  20  L.  ed.  5S1. 


What  is  Unfair  Competition? 


35 


11  The  right  to  restrain  anybody  from  using  any  name  that 
he  likes  in  the  course  of  any  business  he  chooses  to  carry  on  is 
a  right  in  the  nature  of  a  trade-mark,  that  is  to  say,  a  man  has 
a  right  to  say,  '  You  must  not  use  a  name,  whether  fictitious  or 
real  —  you  must  not  use  a  description,  whether  true  or  not, 
which  is  intended  to  represent,  or  calculated  to  represent,  to 
the  world  that  your  business  is  my  business,  and  so,  by  a 
fraudulent  misstatement,  deprive  me  of  the  profits  of  the  busi- 
ness which  would  otherwise  come  to  me.'  That  is  the  prin- 
ciple, and  the  sole  principle,  on  which  this  Court  interferes. 
The  Court  interferes  solely  for  the  purpose  of  protecting  the 
owner  of  a  trade  or  business  from  a  fraudulent  invasion  of 
that  business  by  somebody  else.  It  does  not  interfere  to  pre- 
vent the  world  outside  from  being  misled  into  anything. ' ' 80 

The  Supreme  Court  of  the  United  States  considers  that  the 
action  of  unfair  competition  is  based  on  the  ground  that  the 
deception  by  one  trader  resulting  in  loss  to  another  of  "  ad- 
vantages of  celebrity  "  is  against  equity.  "  Equity  gives 
relief  in  such  a  case,  upon  the  ground  that  one  man  is  not 
allowed  to  offer  his  goods  for  sale,  representing  them  to  be 


89  Levy  v.  Walker,  L.  R.  10  Ch. 
Div.  436-^7-48-1879. 

"  Imposition  on  the  public  occa- 
sioned by  one  man  selling  his  goods  as 
the  goods  of  another,  cannot  be  the 
ground  of  private  action  or  suit." 
Chancellor  Westburyva  Leather  Cloth 
Co.  v.  American  Leather  Cloth  Co.  (4 
De  G.  J.  &  S.  137-41-1863,  11  H. 
L.  Cas.  523) ;  W eerier  v.  Brayton,  152 
Mass.  101,  25  N.  E.  46,  8  L.  R.  A. 
640.  "  The  jurisdiction  of  a  court  of 
equity  to  restrain  the  wrongful  use 
of  such  trade-marks  by  persons  not 
entitled  thereto  is  founded,  not  upon 
the  imposition  upon  the  public  thus 
practiced,  but  on  the  wrongful  in- 
vasion of  the  right  of  property 
therein  which  has  been  acquired  by 
others.  A  remedy- is  offered  only  to 
the  owner  of  the  right  of  property 


in  such  trade-marks  on  account  of 
the  injury  which  is  thus  done  to  him. 
The  wrong  done  to  him  consists  in 
misrepresenting  the  vendible  articles 
sold  as  being  those  of  the  true  owner 
of  the  trade-mark,  and  thus  to  a 
greater  or  less  extent  depriving  him 
of  the  benefit  of  the  reputation  he 
has  given  to  the  articles  made  or 
dealt  in  by  him"  (id.  p.  103).  Cited 
in  American  Washboard  Co.  v.  Sagi- 
naw Mfg.  Co.,  103  F.  R.  281-1900; 
50  L.  R.  A.  609. 

"  The  rule  which  protects  against 
unfair  competition  is  primarily  for 
the  protection  of  the  party  against 
whom  such  competition  is  directed, 
and  only  incidentally  for  the  pro- 
tection of  the  public."  (Paul  on 
Trade-marks,  p.  388,  §  215.) 


36 


Unfair  Business  Competition. 


the  manufacture  of  another  trader  in  the  same  commodity. 
Suppose  the  latter  has  obtained  celebrity  in  his  manufacture, 
he  is  entitled  to  all  the  advantages  of  that  celebrity,  whether 
resulting  from  the  greater  demand  for  his  goods  or  from  the 
higher  price  the  public  are  willing  to  give  for  the  article, 
rather  than  for  the  goods  of  the  other  manufacturer,  whose 
reputation  is  not  so  high  as  a  manufacturer. ' ' 90 

See  also  Shaver  v.  Heller?1  which  holds  that  suits  for  unfair 
competition  in  trade  "  are  founded  upon  the  damage  to  the 
trade  of  the  complainants  by  the  fraudulent  passing  of  the 
goods  of  one  manufacturer  for  those  of  another.  *  *  No 
proprietary  interest  in  the  words,  names,  or  means  by  which 
the  fraud  is  perpetrated  is  requisite  to  maintain  a  suit  to  enjoin 
it.  It  is  sufficient  that  the  complainant  is  entitled  to  the  cus- 
tom, the  good-will,  of  a  business  and  that  this  good-will  is 
injured  or  is  about  to  be  injured,  by  the  palming  off  of  the 
goods  of  another  as  his.  *  *    There  is  no  practicable  way 

other  than  by  prohibition  of  the  use  of  the  name,  by  which 
filching  the  trade  of  an  article  whose  sale  is  solicited  and  made 
by  its  name  can  be  effectually  prevented."92 


80  McLean  v.  Fleming,  96  U.  S. 
245-251-1877;  24  L.  ed.  828. 

91 108  F.  R.  S21-26-27-1901  (0.  C. 
A.  8th  Cir.),  65  L.  R.  A.  87S. 

62  See  also  Batty  v.  Hill,  1  Hem.  & 
M.  264-1863.  A  manufacturer  ob- 
tained a  gold  medal  at  Exhibition  of 
1862  for  pickles,  etc.,  and  sought  to 
restrain  a  rival  from  making  false 
statements  on  his  goods  that  he  too 
had  been  awarded  a  gold  medal  at 
same  exhibition  in  respect  of  same 
class  of  goods.  Held:  "  It  is  no  part 
of  the  duty  of  the  court  to  enforce 
the  observance  of  the  dictates  of 
morality;  and  though  the  old  maxim 
'  rem  facias,  rem,  si  possis,  recte;  si 
non,  quocunque  modo  rem,'  seems  to 
apply  in  full  force  to  modern 
times,  I  can  only  interfere  when 
some    private    right    is    thereby    in- 


fringed "  (id.  p.  268).  As  there  was 
no  attempt  to  pass  off  defendant's 
goods  as  those  of  the  plaintiff,  in- 
junction was  refused.  Followed  by 
Stirling,  J.,  in  Tallerman  v.  Dowsing 
Radiant  Heat  Co.,  (1901),  1  Ch.  1. 

Avery  &  Sons  v.  Meikle  &  Co., 
81  Ky.  73-S4-1SS3.  *  *  *  "  The 
object  of  trade-mark  law  is  to  pre- 
vent one  person  from  selling  his 
goods  as  those  of  another,  to  the  in- 
jury of  the  latter  and  of  the  public. 
It  grew  out  of  the  philosophy  of  the 
general  rule  that  every  man  should 
so  use  his  own  property  and  rights 
as  not  to  injure  the  property  or 
rights  of  another,  unless  some  prior- 
ity of  right  or  emergency  exists  to 
justify  a  necessarily  different  man- 
ner of  use." 


What  is  Unfair  Competition?  37 

A  reading  of  the  cases  cited  above  shows  that  two 
grounds  at  least  for  this  action  have  been  recognized.  (1) 
Protection  of  the  purchasing  public  against  deception.  (2) 
Protection  of  the  individual's  rights  in  and  to  whatever  "  ad- 
vantages of  celebrity  "  he  has  acquired  in  his  business.  The 
fact  that  some  definite  person  has  actually  been  deceived  by 
particular  acts  of  unfair  competition  complained  of  in  an 
action,  is  the  very  best  evidence  of  the  unfairness  of  the 
methods  of  the  defendant.  AVhile  the  protection  of  the  gen- 
eral public  is  not  intrusted  to  any  individual  and  no  person 
may  institute  an  action  of  this  sort  to  prevent  deception  of 
people  generally;  nevertheless  if  the  public  is  being  deceived 
as  to  some  article  of  commerce  as,  for  instance,  identity  of  a 
business  house,  some  one  is  being  wronged,  and  the  righting 
of  that  wrong  will  often  result  in  distinct  benefit  to  the  general 
public. 

Courts  will  sometimes  protect  trade  names  or  marks,  al- 
though not  registered  or  properly  selected  as  trade-marks,  on 
the  broad  ground  of  enforcing  justice  and  protecting  one  in  the 
fruits  of  his  toil.  "  This  is  bottomed  on  the  principle  of  com- 
mon business  integrity,  and  proceeds  on  the  theory  that,  while 
the  primary  and  common  use  of  a  word  or  phrase  may  not  be 
exclusively  appropriated,  there  may  be  a  secondary  meaning  or 
construction  which  will  belong  to  the  person  who  has  developed 
it.  In  this  secondary  meaning  there  may  be  a  property 
right."93 

§  20.  Attitude  of  Equity  Courts  Toward  Personal  Wrongs. — 
There  is  an  increasing  number  of  decisions  by  equity  courts 
in  which  relief  has  been  given  against  infringement  of  some 
personal  right.  Many  of  these  cases  are  applications  of  old 
principles  governing  the  issuing  of  the  writ  of  injunction,  to 
aew  needs, —  new  injuries  which  modern  conditions  have  pro- 
duced. Many  of  them  are  closely  analogous  to  the  application 
of  the  writ  to  unfair  competition  cases.  This  writ  was  origi- 
nally designed  to  prevent  only  injuries  to  property;  and  the 
principle  has  long  been  established  that  chancery  will  inter- 
vene by  injunction  only  to  protect  property  rights. 

"Sartor  v.  Schaden,  125  Iowa  696-1004,  at  p.  700. 


SS  Unfair  Business  Competition. 

' '  In  many  cases  courts  have  striven  to  uphold  the  equitable 
jurisdiction  upon  the  ground  of  some  property  right,  however 
slender  and  shadowy,  and  the  tendency  of  the  courts  is  to 
afford  more  adequate  protection  to  personal  rights  and  to 
that  end  to  lay  hold  of  slight  circumstances  tending  to  show  a 
technical  property  right. ' ' 94 

According  to  these  cases,  the  court  of  equity  may  protect  a 
man  from  an  injurious  use  of  his  name,  not  because  it  is  a 
libel  or  calculated  to  do  him  injury,  but  because  such  use  of 
the  name  will  cause  injury  to  his  property. 

Yet  these  cases  are  not  to  be  considered  as  holding  that 
equity  will  never  protect  personal  rights.  It  is  doing  more 
each  year  to  protect  such  rights,  although  steadily  declaring 
its  jurisdiction  does  not  go  to  that  length.  Equity  jurisdiction 
is  alleged  to  have  been  derived  in  part  from  the  prerogative 
of  the  King  as  parens  patriae,  for  the  protection  of  helpless 
persons  who,  by  reason  of  that  fact,  were  regarded  as  wards  of 
Chancery.95  This  included  protection  from  the  effects  of  a 
breach  of  contract  or  of  a  trust  in  which  these  helpless  persons 
were  interested ;  use  of  portraits  ;9G  preservation  of  the  privacy 
of  letters  ;9T  protection  of  infants  from  injury  by  parents,  etc.08 
In  all  cases  similar  to  the  above,  equity  does  go  to  the  relief 
of  persons  whose  personal  rights  are  in  danger  of  violation. 
The  nominal  basis  of  the  action  is  property  rights.  The 
actual  relief  is  given  to  lessen  or  stop  a  personal  injury. 
England  has  done  away  with  this  fiction  by  a  statute  enlarging 
the  power  of  its  courts  of  equity  to  include  all  cases  in  which  it 

"Judge     Dill    in     Yanderbilt     v.  8  Misc.   (N.  Y.)   36-1894;  28  N.  Y. 

Mitchell,  67  Atl.  (N.  J.  Ct.  of  App.)  Supp.  281;  Marks  v.  Jaffa,  6  Misc. 

97-100-1907    (citing   note   to    Chap-  (N.  Y.)   290-1893;  26  N.  Y.  Supp. 

pell   v.   Stewart,   37   L.   R.    A.   787-  908;   Schuyler  v.   Curtis,   147  N.  Y. 

1896);  South  v.  Webster,  10  Beav.  434-1895;  42  N.  E.  22;  31  L.  R.  A. 

561-1847;  Prudential  Assurance  Co.  286. 

v.   Knott,  L.  R.   10   Ch.   App.   Cas.  9T  Corliss  v.  Walker,  64  F.  R.  230- 

142-1875.)  1894,    31    L.    R.    A.    283;    Gee    v. 

85  Butler  v.  Freeman,  1  Ambl.  301-  Pritchard,  2  Swanst.  403-1818. 

1756 ;   Smith  v.   Smith,  3  Atk.   304-  9'  Shelley  v.  Westbrooke,  Jac.  266- 

1745;  Pearce  v.  Crutchfield,  14  Ves.  1821;   Be  Manneville  v.  Be  Manne- 

Jr.  206-1807.  ville,  10  Ves.  Jr.  52-1804. 

'"Murray  V.  Gast  Lithographic  Co., 


What  is  Unfair  Competition?  39 

shall  appear  to  the  court  to  be  just  or  convenient  that  such 
order  should  be  made.93  The  New  York  Court  of  Appeals  has 
held  in  Roberson  v.  Rochester  Folding  Box  Co.1  that  the  right 
of  privacy,  founded  on  claim  to  live  without  being  a  subject  of 
publicity,  does  not  exist  in  law  or  equity.  The  case  is  entitled 
to  litle  if  any  consideration,  if  its  reception  by  other  tribunals 
is  to  be  a  criterion;  for  it  is  seldom  cited  except  to  be  dis- 
approved. "  The  jurisdiction  of  the  Court  of  Chancery  in 
cases  of  fraud  is  as  broad  and  far  reaching  as  the  forms,  the 
devices,  and  the  ramifications  of  fraud  can  extend."2  The 
case  of  Ball  v.  Best 3  shows  not  only  an  unfair  use  of 
a  family  name  in  trade  but  also  that  in  this  sort  of  a 
case  the  Court  of  Equity  must  and  does  consider  the 
effect  of  the  modern  methods  of  doing  business.  This  case 
involved  the  effect  of  competition  by  mail  orders,4  but  mail 
order  business  is  only  one  of  the  many  new  features  of  trade, 
which  tax  the  learning  of  the  chancellor  to  protect  the  ag- 
grieved party  before  him,  under  the  rules  of  equity,  in  the 
face  of  these  new  conditions.  Eegardless  of  the  novelty 
of  the  method  used,  regardless  of  the  seeming  impossibility  of 
applying  to  it  any  known  equitable  remedy,  the  complainant  is 
entitled  to  the  court's  aid  and  protection  in  his  effort  to  se- 
cure the  fruit  of  his  industry  and  invention.  Exercising  this 
part  of  its  jurisdiction  equity  has  protected  various  personal 
rights  against  injury.  The  following  injunctions  of  this  sort 
have  been  granted:    Against  use  of  a  rifle  range  until  ren- 

"  Act  of  1873,  25  sub-sec.  8.  order    business.     Defendant    was     a 
'171   N.   Y.   538-1902;    64   N.    E.  son     of     a    former    proprietor    and 
442;  59  L.  R.  A.  478.  opened  a  store  in  Chicago  under  the 
2  Judge     Dill     in      Yanderbilt     v.  name  of  "A.  S.  Best  &  Co.,"  adver- 
Mitchell,  67  Atl.  97,  at  p.  99-1907.  tising     as     "  Liliputian     Outfitters" 
See    also    Weinstock   v.   Marks,   109  and  also  "  Formerly  with  Best  &  Co., 
Cal.  529;  42  Pac.  142;  30  L.  R.  A.  N.    Y."       Defendant     then     started 
182,  where  the  relation  of  equity  to  to    get    mail    order    trade.     An    in- 
new  kinds  of  wrongs  is  discussed.  junction  was  granted  restraining  de- 
3 135  Fed.  434-1905.  fendant    from    using    name    "  Best " 
*  Bail  v.  Best,  135  Fed.  434-1905.  with   or   without   a   prefix,   and   also 
The    plaintiff    owned    "  Best    &    Co.,  from   using   the   word   "  Liliputian," 
Liliputian    Bazaar,"   in   N.    Y.     The  although  one  house  was  in  New  York 
firm    had    built    up    a    large    mail  and  one  in  Chicago. 


40  Unfair  Business  Competition. 

dered  safe.5  Noise  of  workshop.0  R 'in ging  of  church  bell  at 
night.7  Use  of  unhealthful  jail  grounds.8  Use  of  gas  near 
dwelling.9  Blasting  near  dwelling.10  Powder  Mills.11  Dis- 
charge of  sewer.12 

In  nearly  all  these  cases  a  question  of  property  value  is  in- 
volved, but  the  principal  question  is  one  of  personal  rights. 
In  those  involving  disturbance  of  sleep  the  element  of  prop- 
erty is  nearly  eliminated.  In  Tuchman  v.  Welch13  the  Federal 
court  granted  an  injunction  against  persecution  by  state  attor- 
ney, on  account  of  alleged  violation  of  liquor  laws,  on  ground 
of  protecting  defendant's  business  from  interference,  and 
quite  as  much,  his  person  and  liberty  from  harassing  pro- 
ceedings under  the  state  law.  English  courts  have  sustained 
the  jurisdiction  of  a  court  of  equity  to  prevent  an  unwar- 
ranted use  of  a  man's  name,  where  the  probable  effect  would 
be  to  expose  him  to  the  risk  of  future  injury  and  liability. 

Courts  of  equity  have  done  much  to  protect  intellectual, 
moral  and  emotional  life.  They  have  protected  reputation, 
although  this  relief  is  usually  denied.14  Also  rights  of  privacy, 
and  injury  to  feelings. 

§  21.  What  is  Infringement. —  The  term  "infringement  " 
is  usually  applied  to  attempts  to  imitate  some  feature  of  a 
technical  trade-mark.  It  was  in  use  in  this  sense  before  the 
law  of  unfair  competition  was  understood.  Now,  however,  it 
is  found  equally  in  unfair  competition  cases,  and  may  be  con- 
sidered as  a  term  covering  all  acts  violating  rights  of  others, 
either  under  the  law  as  to  technical  trade-marks  or  that  of 
unfair  competition. 

s  McKillopp  v.  Taylor,  25  N.  J.  Eq-  10  Scott  v.   Bay,   3   Md.   431-1853. 

139-1874.  "  Crowder  v.  Tinkler,  19  Ves.  Jr. 

'Dennis  v.  Eckhardt,  3  Grant  Cas.  617-1816;  Wier's  Appeal,  74  Pa.  St. 

(Pa.)  389-1862.  230-1873;  Daw  v.  Enterprise  Powder 

'Martin  v.  Nutkin,  2  P.  Wins.  266-  Mfg.  Co.,  160  Pa.  St.  479-1894;  28 

1724;   Soltau  v.   De  Held,  21  L.  J.  Atl.  841. 

(Ch.)  N.  S.  153-1851.  "Butler  v.  The  Mayor  of  Thomas- 

8  Stuart  v.   La  Salle   County,  etc.,  ville,  74  Ga.  570-1885. 

83  111.  341-185.  "  42  Fed.  548-1890. 

'People's    Gas   Co.   v.    Tyner,  131  u Mead  v.  Stirling,  62  Conn.  586- 

Ind.  277-1891;  31  ST.  E.  59;  16  L.  R.  1892;  27  Atl.  591;  23  L.  R.  A.  227. 
A.  443. 


What  is  Unfair  Competition1?  41 

§  22.  Acts  Contributory  to  Unfair  Acts — Unfair  acts  are 
often  rendered  possible  only  through  aid  of  third  persons  who 
contribute  to  the  damaging  result  by  the  printing  or  making 
of  labels  or  other  articles,  with  or  without  knowledge  of  the 
use  to  which  they  are  to  be  put  by  him  to  whom  they  are  sold.15 

An  action  for  unfair  competition  lies  against  one  who  makes 
and  sells  to  others  who  are  competitors  of  plaintiff's,  labels  and 
wrappers  which  closely  resemble  plaintiff's;  which  may,  and, 
as  alleged,  actually  have  been,  used  by  them  to  mislead  the 
public ;  it  need  not  be  alleged  that  the  wrappers  have  been  used 
for  the  specific  kind  of  goods  sold  by  plaintiff.10 

Printers  have  a  right  to  print  and  sell  "  stock  labels  "  to 
whomever  they  please  and  cannot  be  enjoined  from  so  doing. 
But  it  cannot  be  objected,  where  one  claims  an  exclusive  right 
to  the  use  of  a  stock  label  for  a  particular  purpose  that  to  allow 
this  right  would  amount  to  a  fraud  on  the  printer,  as  curtailing 
his  right  to  sell  to  any  buyer.17 

Passing  off  the  goods  of  a  third  party  may  be  accomplished 
in  various  ways  —  such  as  by  a  retailer  giving  the  goods  of  A 
to  a  customer  who  asks  for  the  goods  of  B ;  by  his  use  of  a  show 
card  of  B  on  the  goods  of  A ;  by  exhibiting  some  of  B  's  goods 
with  a  quantity  of  A's. 

This  question  of  acts  contributory  to  unfair  acts  is  further 
considered  in  the  chapter  on  Defenses  under  the  head  of  the 
defense  that  "  Deception  is  not  due  to  defendant's  acts,  but  to 
the  acts  of  others."    (§  254.) 

15  Hennessy  v.  Herrmann,  S9  F.  R.  them  to  persons  who  used  them  for 

669-1898  (Cir.  Ct.  N.  D.  Cal.).    The  goods  not  made  by  plaintiff.    Held, 

keeping  for  sale  and  selling  of  labels  That  defendant  should  be  restrained 

made  in  imitation  of  complainant's,  from  printing  and  selling  any  such 

with  the  intention,  through  their  sale,  labels,  notwithstanding  the  possibility 

of  putting  into  the  hands  of  dealers  that  some  might  be  legitimately  used 

the  means  of  deceiving  ultimate  pur-  to  replace  labels  that  had  been  lost 

chasers  gives  a  right  of  action.  from  plaintiff's  bottles. 

Farina   v.    Silverlock,   4   Kays    J.  " Hildreth  v.  Sparks  Mfg.  Co.,  09 

650-1858.       Plaintiff     used     certain  F.     R.    484-1899   (Cir.     Ct.     S.     D. 

labels  for  cologne  bottles.    Defendant  N.  Y.). 

printed    copies    of    these,    or    labels  "  Sartor  v.  Sehaden,  125  Iowa  696- 

closely    resembling^  them    and    sold  705. 


CHAPTER  II. 

Intent  to  Defraud  —  Must  it  Be  Proved? 

Section  23.  Question  of  intent  is  a  plea  raised  by  defense. 

24.  Division  of  eases  as  regards  intent. 

25.  Cases  holding  that  intent  is  immaterial. 

26.  Cases  holding  intent  must  be  proved. 

27.  Fraudulent  intent  may  be  presumed. 

28.  No  actual  proof  of  intent   necessary  for  presumption. 

29.  Knowledge   of   plaintiff's    rights     on     part     of    defendant     is 

unnecessary. 

30.  Denial  of  intent  will  not  avail  defendant. 

31.  Proof  of  specific  orders  to  his  agents  and  servants  to  act  fairly 

will  not  excuse  defendant. 

32.  Actual  injury  to  plaintiff  by  defendant  must  be  imminent. 

33.  Unimportant   facts   not   a   basis   of   presumption   of   intent   to 

defraud. 

34.  Presumption  may  arise  from  similarity  of  name  or  get-up. 

35.  Presumption  of  fraud  arises  from  so  selling  goods  that  vendees 

may  pass  them  off  fraudulently. 

36.  Presumption  may  be  based  on  manner  in  which  the  truth  is  told. 

John  Cutler,  Esq.,  editor  of  "  Reports  of  Patents-Design 
and  Trade-Mark  Cases —  (the  "  R.  P.  C")  in  his  lectures  on 
"  Passing-Off  "  —  London,  1904,  says  that:  "An  inten- 
tion to  imitate  or  copy,  and  an  intention  to  pass  off  are  two 
distinct  tilings.  The  former  may  be  legal,  but  the  latter  never 
can  "  (p.  6).  It  is  the  latter  sort  of  intention  that  we  have  to  do 
with  here,  the  intent  to  be  unfair,  to  pass  off  one's  own  goods 
or  name  as  another's  —  or  to  pass  off  A's  goods  as  the  goods 
of  B.  In  reading  unfair  competition  cases,  frequent  state- 
ments will  be  found  to  the  effect  that  proof  of  fraudulent 
intent  on  the  part  of  the  defendant  is  necessary  to  the  action, 
but  also  quite  as  many  and  forceful  statements  that  the  rule  is 
that  no  intent  need  be  proved.  Some  of  these  statements  are 
considered  in  this  chapter  in  an  attempt  to  discover  the  true 
rule. 

§  23.  Question  of  Intent  is  a  Plea  Raised  by  Defense.— 
This  question  is  raised  usually  as  a  defense,  but  it  is  con- 

[42] 


Intent  to  Defraud  —  Must  it  Be  Proved?  43 

sidered  here,  rather  than  under  Defenses,  because  an  under- 
standing of  it  seems  necessary  at  the  outset. 

This  question  is  not  important  in  technical  trade-mark  cases. 
The  property  right  of  a  person  in  a  technical  trade-mark  may 
be  infringed  unintentionally  as  well  as  fraudulently,  and  the 
innocent  infringement  will  be  restrained  irrespective  of  the 
question  of  intention.1  "  In  the  instance  of  a  lawfully  regis- 
tered trade-mark,  the  fact  of  its  use  by  another  creates  a  cause 
of  action.  In  the  instance  of  the  use  in  bad  faith  of  a  sign,  not 
in  itself  susceptible  of  being  a  valid  trade-mark,  but  so 
employed  as  to  have  acquired  a  secondary  meaning,  the  whole 
matter  lies  in  pais."2 

See  §  175  as  to  Intent  and  Malice  in  actions  based  on  inter- 
ference with  contract. 

The  plea  of  a  defendant  that  his  offense  was  not  intended  — 
that  he  acted  in  ignorance  of  the  plaintiff's  rights  —  does  not 
lessen  the  plaintiff's  damages. 

Here  as  elsewhere  there  may  be  damnum  absque  injuria. 
Equity  cannot  protect  against  every  wrong  that  is  committed. 
Some  injuries  must  be  suffered  for  which  there  can  be  no 
remedy.  In  cases  involving  names  that  have  acquired  a 
secondary  meaning,  the  question  of  fraud  is  much  simplified, 
because  "  when  one  has  caused  a  particular  species  of  manu- 
facture to  be  characterized  by  certain  marks  or  symbols,  and 
given  the  article  such  currency  in  trade  that  it  is  identified 
with  the  mark,  the  law  holds  him  to  be  possessed  of  a  property 
in  such  mark."3  The  possession  of  this  property  interest 
gives  complainant  rights,  which  are  practically  the  same  as 
those  of  the  owner  of  a  technical  trade-mark,  viz. :  rights  suffi- 
cient to  warrant  a  court  protecting  it,  regardless  of  whether 
or  not  one  injuring  it  does  so  with  fraudulent  intent. 

The  question  then  is  as  to  the  force  of  the  plea,  and  whether 
an  allegation  of  such  intent  on  defendant's  part  is  necessary 
in  the  plaintiff's  bill. 

iDay   v.    Webster,    23   App.    Div.  665-1900,  at  p.  677;  44  L.  ed.  363; 

(N.  Y.)    601-1897;  49  N.  Y.  Supp.  21  Sup.  Ct.  270. 
314.  3  The    Mrs.    G.    B.    Miller    <&    Co. 

2  Elgin    National     Watch     Co.     v.  Tobacco  M'f'y   v.   Commerce,  45   N. 

Illinois  Watch   Case  Co.,  179  U.  S.  J.  L.  18-23-1883. 


44  Unfair  Business  Competition. 

§  24.  Division  of  Cases  as  Regards  Intent. —  The  Pennsyl- 
vania court  lias  divided  cases  of  unfair  competition  as  regards 
intent  thus:  "  There  are  two  classes  of  cases  involving  ju- 
dicial interference  with  the  use  of  names,  first,  where  the  intent 
is  to  get  an  unfair  and  fraudulent  share  of  another's  business, 
and  second,  where  the  effect  of  the  defendant 's  action,  irrespec- 
tive of  his  intent,  is  to  produce  confusion  in  the  public  mind 
and  consequent  loss  to  the  complainant."4  In  both  cases  the 
courts  of  equity  administer  relief  without  regard  to  the  exist- 
ence of  a  technical  trade-mark.  A  division  of  these  cases  is 
suggested  by  the  United  States  Supreme  Court  in  Lawrence 
Mfg.  Co.  v.  Tennessee  Mfg.  Co.,5  where  it  says:  "  The  deceit- 
ful misrepresentation  or  perfidious  dealing  must  be  made  out, 
or  be  clearly  inferable  from  the  circumstances." 

We  will  turn  then  to  a  consideration  of  the  cases,  in  the 
effort  to  discover  some  principles  of  guidance  as  to  the  neces- 
sity of  proving  intent.  The  extremes  are  represented  on  the 
one  hand  by  those  that  hold  that  it  is  not  what  the  defendant 
intended,  but  what  he  did  that  a  court  must  consider ;  and  on 
the  other  by  those  that  hold  that  the  action  is  based  on  fraud, 
which  must  be  proven,  because  there  can  be  no  relief  against 
a  defendant,  who  had  acted  in  good  faith,  although  to  the  in- 
jury of  the  plaintiff.  There  can  be  no  division  of  the  cases  by 
geographical  lines,  for  both  here  and  in  England  each  view  is 
upheld  by  cases  of  authority. 

This  chapter  deals,  not  with  the  cases  in  which  clear  proof 
is  brought  out  of  the  deceitful  intent  of  the  defendant,  in  doing 
the  acts  complained  of,  but  with  those  cases  in  which  it  is  set 
np  as  a  defense  that  the  alleged  wrongful  acts  were  done  in 
ignorance  of  the  plaintiff's  right;  or,  if  not  in  ignorance  of 
these  rights,  without  any  purpose  or  intent  of  injuring 
him  directly  or  indirectly.  Most  of  the  cases  of  unfair  com- 
petition fall  in  the  latter  class;  and  it  is  frequently  a  serious 
question  how  much  proof  must  be  offered  by  the  plaintiff  as 
to   the  defendant's  motive.     What   are   the  requirements   of 

*  American      Clay     Manufacturing  6 138  IT.  S.  537-51-1890;  34  L.  ed. 

Co.,  a  Corporation  of  Pa.  v.  Same  of      997;  11  Sup.  Ct.  396. 
New  Jersey,  198  Pa.  St.  1S9-1901,  at 
p.  193;  47  Atl.  Rep.  936. 


Lsttent  to  Defraud  —  Must  it  Be  Proved  ?  45 

proof  to  establish  a  cause  of  action,  how  much  knowledge  of 
the  defendant's  purpose  and  intent  must  be  shown  to  give  the 
court  grounds  on  which  to  grant  relief? 

§  25.  Cases  Holding  that  Intent  is  Immaterial. — One  of  the 
earliest  cases  on  this  point  is  Millington  v.  Fox,  decided  in 
England  in  1838.  It  is  mentioned  because  it  is  frequently 
cited  here  and  abroad  as  first  laying  down  the  rule  that  the 
defendant's  intent  was  not  an  essential  part  of  the  cause  of 
action.6  About  the  year  1700,  the  plaintiff's  business  was 
founded  by  Crowley.  In  1782  Millington  became  a  partner. 
The  business  had  since  been  carried  on  by  him  or  his  descend- 
ants under  the  name  of  "  Crowley,  Millington  &  Company." 
The  steel  they  made  became  known  as  "  Crowley's  steel" 
or  "  Crowley  Millington  "  steel  and  was  distinguished  by 
certain  marks  on  the  steel,  the  principal  ones  being  either 
"  Crowley  "  or  "  Crowley  Millington,"  also  the  letters  "  I. 
H., ' '  being  the  initials  of  their  principal  workman.  Six  years 
before  the  filing  of  the  bill,  Fox  began  to  mark  steel  with 
these  said  marks  of  the  plaintiffs.  He  alleged  that  "  Crow- 
ley "  and  "  Crowley  Millington  "  so  far  as  he  knew  were 
merely  marks,  denoting  certain  kinds  of  steel  that  had  been 
universally  used  in  the  steel  trade  for  many  years  and  that 
he  had  never  heard  of  the  plaintiffs'  firm.  Cottenham,  L.  C, 
considered  that  there  was  no  fraud  in  the  case  and  that 
"  Crowley  "  and  "  Crowley  Millington  "  were  generally  used 
in  conversation  at  least  as  descriptive  of  a  particular  quality 
of  steel,  and  added  "  that  circumstance,  however,  does  not  de- 
prive the  plaintiffs  of  their  right  to  the  exclusive  use  of  those 
names;  and,  therefore,  I  stated  that  the  case  is  so  made  out 
as  to  entitle  the  plaintiffs  to  have  the  injunction  made  per- 

9  Millington  v.  Fox,  3  Myl.  &  Cr.  facturer,    whether    done    scienter    or 

338-1838.     See     also    Ainsworth    v.  not,  is  an  interference  with  his  busi- 

Walmsley,  L.  R.  1  Eq.  518-25-1866.  ness  which  this  court  will  interpose 

Contention  that,  while  in  a  trade-mark  to   prevent,   on  the  ground  that   the 

case  the  scienter  need  not  be  proved,  defendant  is  endeavoring  to  pass  off 

misrepresentation     must     always     be  the  goods  of  his  own,  or  somebody 

shown    to    be    wilful,    not    sustained,  else's    manufacture,     as    the    manu- 

Wood,  V.  C,  says :     "  The  use  there-  f acture  of  the  plaintiff." 
fore  of  the  name  of  another  manu- 


4G  Unfair  Business  Competition. 

petual  "  (id.  p.  352).  There  was  considerable  evidence  given 
to  show  that  the  plaintiffs  had  known  for  some  time 
that  the  name  had  been  used  by  other  dealers  among  the  de- 
fendants who  marked  their  steel  with  these  names  and  it 
seemed  to  be  a  fact,  regardless  of  whether  the  plaintiffs  knew 
it  or  not,  that  much  steel  had  been  sold  by  other  firms  than  the 
plaintiffs,  bearing  these  names.    Perpetual  injunction  granted. 

In  1870,  in  Connecticut,  the  Supreme  Court  of  Errors  de- 
cided Holmes,  Booth  &  Haydens  v.  Holmes,  Booth  &  Atwoocl 
Mfg.  Co.7  a  proceeding  in  equity  to  enjoin  the  use  of  a 
name.  The  defense  was  set  up,  that,  in  using  the  name  in 
question,  the  defendants  had  no  intention  of  injuring  the 
plaintiffs.  The  court  said:  "  There  are  cases  which  seem 
to  establish  the  proposition  that  neither  fraud  nor  actual  in- 
tention to  do  the  injury  complained  of  is  essential  to  the  peti- 
tioner's case."8  "  The  ground  on  which  courts  of  equity 
afford  relief  in  this  class  of  cases  is  the  injury  to  the  party  ag- 
to  believe  that  the  goods  of  one  man  or  firm  are  the  produc- 
tion of  another.  The  existence  of  these  consequences  does  not 
grieved,  and  the  imposition  upon  the  public  by  causing  them 
necessarily  depend  upon  the  question  whether  fraud  or  an 
evil  intent  does  or  does  not  exist.  The  quo  animo,  therefore, 
would  seem  to  be  an  immaterial  inquiry  "  (id.  p.  295-96). 

In  1877,  the  House  of  Lords  in  England  in  Singer  Machine 
Mfg.  Co.  v.  Wilson9  held  squarely  that  intent  was  not  essential 
to  relief.  This  case  contains  a  well-considered  opinion  by  Lord 
Cairns  in  which  he  follows  Millington  v.  Fox,  and  contends 
that,  whatever  be  the  intent  of  the  defendant  in  passing  off  his 
goods  as  those  of  the  plaintiff,  the  injury  to  the  plaintiff  is  the 
same ;  and  the  action  of  the  court  must  depend  on  the  right  of 
the  plaintiff  in  the  mark  used  or  imitated  by  the  defendant, 
rather  than  on  the  intent  of  the  defendant.  The  case  that  was 
the  foundation  for  this  opinion  involved  the  use  of  a  name  of  an 
article  on  which  a  patent  had  expired.  Lord  Cairns  said :  "  I 
wish  to  state  in  the  most  distinct  manner  that,  in  my  opinion, 

7  37  Conn.  278.  Ule,    31    Beav.    292-1802;    Davis    v. 

8  Citing  Millington  v.  Fox,  3  Myl.      Kendall,  2  E.  I.  566-1850. 

&    Cr.    33S-183S;     Cartier    v.    Car-  e3  App.   Cas.  376-91-1877. 


Intent  to  Defraud  —  Must  it  Be  Proved?  47 

fraud  is  not  necessary  to  be  averred  or  proved  in  order  to 
obtain  protection  for  a  trade-mark.  The  argument  that  fraud 
must  be  proved  assumes  that  the  trade-mark  of  the  plaintiffs 
has  been  adopted  and  used  by  the  defendant,  but  contends  that 
this  use  of  it  is  to  continue  without  restraint  even  after  the 
improper  use  has  been  pointed  out,  merely  because,  in  the 
first  instance,  it  took  place  ignorantly  or  inadvertently.  This 
argument  appears  to  me  to  be  founded  on  a  misapprehension. 
A  man  may  take  the  trade-mark  of  another  ignorantly,  not 
knowing  it  was  the  trade-mark  of  the  other ;  or  he  may  take  it 
in  the  belief,  mistaken  but  sincerely  entertained,  that  in  the 
manner  in  which  he  is  taking  it  he  is  within  the  law,  and 
doing  nothing  which  the  law  forbids;  or  he  may  take  it 
knowing  it  is  the  trade-mark  of  his  neighbor,  and  intending 
and  desiring  to  injure  his  neighbor  by  so  doing.  But  in  all 
these  cases  it  is  the  same  act  that  is  done,  and  in  all  these 
cases  the  injury  to  the  plaintiff  is  just  the  same.  The  action 
of  the  court  must  depend  upon  the  right  of  the  plaintiff,  and 
the  injury  done  to  that  right.  What  the  motive  of  the  defend- 
ant may  be,  the  court  has  very  imperfect  means  of  knowing.  If 
he  was  ignorant  of  the  plaintiff's  right  in  the  first  instance, 
he  is,  as  soon  as  he  becomes  acquainted  with  them  and  per- 
severes in  infringing  upon  them,  as  culpable  as  if  he  had  orig- 
inally known  them.  I  have  never  known  any  serious  doubt 
entertained  on  this  subject  since  the  case  of  Millington  v. 
Fox."10 

In  1877,  also,  the  New  York  Court  of  Appeals  held  that  in- 
tent was  not  necessary,  in  a  case  not  a  technical  trade-mark 
case.  The  United  States  trade-mark  statute  was  not  then  in 
a  valid  form  and  was  not  in  force.11 

Here,  as  in  other  civil  actions,  the  law  does  not  try  to  pene- 
trate the  secret  motives  with  which  the  act  is  done.  It  contents 
itself  with  the  conclusion  that  the  party  intended  the  natural 
and  probable  consequences  of  the  act.12 

10  3  Myl.  &  Cr.  338-1838.  tent  on  the  part  of  the  wrongdoer. 

11  Colman  v.  Crump,  70  N.  Y.  573-  It  is  sufficient  that  the  proprietary 
8-1877.  In  1860  plaintiffs  adopted  as  right  of  the  party  and  its  actual  in- 
their     trade-mark    'a     bull's     head.  fringement  is  shown." 

"Neither  is  it  necessary  to  establish  u McCann    v.     Anthony,    21    Mo. 

a  guilty  knowledge  or  fraudulent  in-      App.  83-1SS6. 


48  Unfair  Business  Competition. 

What  is  in  the  mind  of  the  defendant,  what  his  motive  was, 
whether  he  actually  intended  what  he  accomplished,  is  always 
a  hard  question  and  sometimes  one  that  cannot  be  answered. 
Lord  Cairns  rightly  says  there  is  no  difference  between  the 
guilt  of  him  who  first  acted  in  ignorance  of  plaintiff's  rights 
and  later,  on  learning  of  them,  continued  his  reprehensible  con- 
duct, and  he  who  set  out  from  the  start  to  injure  the  plaintiff's 
business.  The  real  question  is  not  of  intent  so  much  as  it  is  of 
rights  —  the  extent  of  the  rights  of  each  party  to  the  name  in 
question.  The  opinion  in  Singer  Machine  Manufacturers  v. 
Wilson  Machine  Manufacturers,™  cites  Welch  v.  Knott,1* 
where  it  was  said  that  "  the  defendant  would  not  be  en- 
titled to  use  the  plaintiffs'  bottles  in  such  a  manner  as,  in 
fact,  to  mislead  the  public,  although  there  might  be  no  inten- 
tion on  his  part  to  mislead."  This  doctrine  was  again  enunci- 
ated in  England,  in  1899,  in  Cellular  Clothing  Co.  v.  Maxton 
&  Murray,15  where  the  question  whether  or  not  fraudulent  in- 
tent was  necessary  to  a  good  cause  of  action  on  the  ground  of 
unfair  competition,  was  discussed.  The  court  held,  citing  Mill- 
ington  v.  Fox,  that  fraudulent  intent  was  not  necessary  to  con- 
stitute a  right  to  claim  protection  against  the  unlawful  use  of 
words.  "  The  only  observation  that  I  wish  to  make  upon  that 
part  of  the  argument,"  said  the  court,  "  is  that  it  seemed  to 
be  assumed  that  a  fraudulent  intention  is  necessary  on  the  part 
of  the  person  who  was  using  the  name  in  selling  goods  in  such 
a  way  as  to  lead  people  to  believe  that  they  were  the  goods  of 
another  person.  That  seems  to  me  to  be  inconsistent  with  a 
decision  given  something  like  sixty  years  ago  by  Lord  Cotten- 
ham  in  Millington  v.  Fox,16  who  goes  out  of  his  way  to  say 
very  emphatically  that  that  is  not  at  all  necessary  in  order  to 
constitute  a  right  to  claim  protection  against  the  unlawful  use 
of  words  or  things  —  I  say  things,  because  it  is  to  be  observed 
.  that  not  only  words  but  things,  such  as  the  nature  of  the  wrap- 
per, the  mode  in  which  the  goods  are  made  up,  and  so  on, 
may  go  to  make  up  a  false  representation ;  but  it  is  not  neces- 
sary to  establish  fraudulent  intent  in  order  to  claim  the  inter- 
vention of  the  court. ' ' 

"3  App.  Cas.  376-1877.  "(1899)   App.  Cas.  326. 

14  4  K.  &  J.  747-51-1857.  "  3  Myl.  &  Cr.  338-1838. 


Intent  to  Defraud  —  Must  it  Be  Proved? 


49 


The  English  rule  is  summarized  by  Mr.  Cutler  17  thus :  "It 
is  not  necessary  that  the  person  charged  with  passing  off 
should  be  proved  to  have  intended  to  pass  off  his  goods  as 
those  of  the  plaintiff.  The  question  is,  what  is  the  commercial 
effect  of  what  he  is  doing?  If  the  effect  would  be  to  pass  off 
his  goods  as  those  of  the  plaintiff,  then  his  honesty  of  purpose 
or  the  absence  of  any  intention  to  deceive  is  no  defense."  And 
Lord  Halsbury  states  it  thus :  ' '  Where  one  comes  to  see 
where  the  real  question  is,  it  is  in  a  single  sentence.  Whether 
the  one  name  is  so  nearly  resembling  the  name  of  another  as  to 
be  calculated  to  deceive?  *  *  *  That  is  the  very  question 
your  Lordships  have  to  decide  *  *  *  In  the  result  it  is  per- 
fectly immaterial  to  my  mind,  for  the  purpose  of  the  decision 
of  this  case,  whether  they  were  fraudulent  or  not,  *  *  *  it 
is  perfectly  immaterial  whether  they  intended  it  or  not."18 

The  state  courts  of  the  United  States  are  far  from  uniform 
on  this  question.  Many  follow  the  rule  of  the  English  cases, 
just  considered,  while  others  uphold  the  stand  taken  by  the 
United  States  Supreme  Court.  Holmes,  Booth  &  Hay  dens  v. 
Holmes,  Booth  £  Ativood  Mfg.  Co.,19  has  been  referred  to, 
Pratt's  Appeal20  holds  the  same  as  to  intent. 


17  "  Passing  Off,"  by  John  Cutler, 
Lond.,  1907,  pp.  5,  6. 

18  North  Cheshire,  etc.,  Brewery  Co. 
v.  Manchester  Brewery  Co.,  (1899) 
App.  Cas.  83-85-87. 

"37  Conn.  278-1870. 

50 117  Pa.  St.  401-1888;  11  Atl. 
878.  The  Master  found  in  his 
report  that  the  defendant  did  not  in- 
tend to  perpetrate  an  actual  fraud 
in  adopting  the  plaintiff's  mark, 
which  had  been  in  use  for  seventy 
years;  and  the  lower  court  said  in 
its  opinion :  "  I  have  carefully  ex- 
amined the  testimony  upon  this 
point,  and  can  discover  no  evidence 
of  fraud  or  bad  faith  in  the  use  of 
the  trade-mark,"  and  a  perpetual  in- 
junction was  granted.  On  appeal 
the  court  says :  "  If  the  defendant's 
4 


print  is  an  imitation  of  that  of  tbe 
plaintiff,  if  it  is  calculated  to  deceive 
and  mislead,  the  motive  of  the  de- 
fendant in  adopting  it  is  not  material 
so  far  as  the  law  of  the  case  is  con- 
cerned, however  much  it  might  affect 
it  in  a  moral  point  of  view.  The 
protection  which  equity  extends  in 
such  cases  is  for  the  benefit  of  the 
manufacturer,  and  to  secure  to  him 
the  fruits  of  his  reputation,  skill,  and 
industry.  The  protection  of  the  pub- 
lic is  another  consideration  and  one 
that  does  not  usually  enter  into  such 
cases"  (p.  410).  Cited  in  Eckhart 
v.  Consolidated  Milling  Co.,  72  111. 
App.  70-1897,  at  p.  72. 

"  The  motives  of  the  persons  at- 
tempting the  wrongful  appropriation 
are  not  material.     They  neither  ag- 


50 


Unfair  Business  Competition. 


In  Wirtz  v.  Eagle  Bottling  Co.,21  the  defense  was  set  up  that 
no  attempt  or  intent  to  imitate  plaintiff's  labels  was  made  by 
defendant ;  but  it  was  held  that  this  fact  constituted  no  defense. 


gravate  or  extenuate  the  injury 
caused  by  such  appropriation.  The 
act  is  an  illegal  one  and  must,  if 
necessary,  be  presumed  to  have  been 
done  with  an  intent  to  cause  the 
results  which  naturally  flow  from  it. 
Nor  will  a  court  of  equity  refuse  to 
enjoin  the  wrongful  appropriation 
of  a  corporate  name  until  the  right 
of  the  first  corporation  to  the  name 
has  been  established  by  the  verdict 
of  a  jury  in  an  action  at  law." 
Newby  v.  Oregon  Central  By.  Co., 
Fed.  Cas.  No.  10,144-1869,  at  p.  40 ; 

I  Deady  609.  This  case  arose  on 
petition  to  enjoin  the  Oregon  Cen- 
tral Railway  from  using  its 
name.  Eckhart  v.  Consolidated  Mill- 
ing Co.,  72  111.  App.  70-1897.  The 
names  in  question  were  the  flour 
brands  "  Christian's  Superlative," 
"  Pettit,  Christian  &  Company  Su- 
perlative," and  "  Ceresota."  The  de- 
fendants had  put  up  flour  in  bags 
of  plaintiff  bearing  these  brands. 
Held,  "  It  is  not  necessary  to  show 
that  the  defendant  acted  with  fraud- 
ulent intention"  (at  p.  72).  Citing 
Pratt's  Appeal,  117  Pa.  St.  401-1888; 

II  Atl.  878;  Holmes,  Booth  &  Hay- 
den  v.  Holmes,  Booth  &  Atwood 
Mfg.  Co.,  37  Conn.  278-1870;  Filley 
v.  Fassett,  44  Mo.  168-1869;  Black- 
well  v.  Wright,  73  N.  C.  310-1S75; 
Davis  v.  Kendall,  2  R.  I.  566-1850; 
Coffeen  v.  Brunton,  5  McLean  256- 
1851;  Fed.  Cas.  No.  2,947.  In  the 
last  mentioned  case  it  is  said  that 
"  Where  the  same  mark  or  label 
is  used,  which  recommends  the 
article  to  the  public  by  the  es- 
tablished reputation  of  another  who 


sells  a  similar  article,  and  the  spu- 
rious article  cannot  be  distinguished 
from  the  genuine  one,  an  injunction 
will  be  granted,  although  there  is  no 
intentional  fraud.  And  I  am  in- 
clined to  think  that  this  is  a  correct 
view  of  the  principle,  for  the  injury 
will  be  neither  greater  nor  less  by 
the  knowledge  to  the  party"  (p. 
1185). 

"50  N.  J.  Eq.  164-67-1892;  24 
Atl.  658.  Wirtz  bottled  beer  and  sold 
it  at  wholesale.  He  invented  three 
labels  which  he  put  upon  his  goods. 
The  defendant  imitated  plaintiff's 
labels.  This  case  is  particularly  in- 
teresting on  the  question  of  intent. 
The  defendant  was  formerly  in  the 
employ  of  the  plaintiff.  He  saw  the 
preparing  of  the  plaintiff's  labels  and 
alleged  there  was  no  attempt  or  in- 
tent on  his  part  to  imitate  these 
labels.  "  The  law,  in  civil  cases,  does 
not  attempt  to  penetrate  the  secret 
motive  which  induced  the  act  brought 
in  judgment,  but  judges  of  its  legal 
quality  solely  by  the  consequences 
which  have  actually  and  necessarily 
proceeded  from  it.  It  is  no  less  a 
dictate  of  justice,  than  of  sound 
reason,  that  every  person  must  be 
understood  to  have  intended  to  do 
just  what  is  the  natural  consequence 
of  his  act  deliberately  done."  The 
aggrieved  person,  in  cases  of  this 
class,  is  not  required  to  show  inten- 
tional fraud,  but  he  makes  a  suffi- 
cient case  to  give  him  a  right  to  pro- 
tection when  he  shows  that  the  de- 
fendant is  using  his  label,  or  one  so 
nearly  like  it  as  to  render  deception 
of    public    and    injury    to     himself 


Intext  to  Defraud  —  Must  it  Be  Proved?  51 

"  The  vital  question,"  said  the  court,  "  in  cases  of  this  kind 
is  not  what  did  the  defendant  mean,  but  what  has  he  done? 
The  legal  quality  of  an  act,  resulting  in  injury,  must  be  de- 
cided, not  by  the  motive  with  which  it  was  done,  but  by  the 
consequences  which  have  necessarily  resulted  from  it." 

The  oldest  of  the  foregoing  cases  are  founded,  not  on  special 
provisions  of  statute,  but  on  general  equitable  principles  laid 
down  in  the  rough,  in  cases  that  preceded  any  trade-mark 
statutes  in  England  or  America.  These  are  general  prin- 
ciples and  apply  to  all  cases,  whether  of  statutory  infringe- 
ment or  of  unfair  competition  as  that  term  is  generally 
understood;  and  we  believe  further,  that  the  cases  which,  long 
before  the  statutes,  held  that  intent  need  not  be  proven  or  even 
presumed  to  warrant  a  court  in  stopping  fraud,  deceit,  and 
injury,  will  ultimately  be  recognized  as  authority  still. 

§  26.  Cases  Holding  Intent  Must  be  Proved.—  In  1877,  the 
Supreme  Court  of  the  United  States  first  laid  down  the  rule 
that  intent  must  be  proven  to  obtain  an  injunction  against  un- 
fair competition.  In  McLean  v.  Fleming,22  Clifford,  J.,  wrote: 
"  Positive  proof  of  fraudulent  intent  is  not  required  where  the 
proof  of  infringement  is  clear,  as  the  liability  of  the  infringer 
arises  from  the  fact  that  he  is  able,  through  the  unwarranted 
use  of  the  trade-mark,  to  sell  a  simulated  article  as  and  for  the 
one  which  is  genuine.  Nor  is  it  necessary  in  order  to  give 
a  right  to  an  injunction  that  a  specific  trade-mark  should  be 
infringed ;  but  it  is  sufficient  that  the  court  is  satisfied  that  there 
was  an  intent  on  the  part  of  the  respondent  to  palm  off  his 
goods  as  the  goods  of  the  complainant,  and  that  he  persists  in 
doing  so  after  being  requested  to  desist  "  (p.  254.  Citing 
Woollam  v.  Ratcliff).2* 

This  case  was  decided  in  1877,  with  the  Act  of  1870  in  force. 

probable,      citing      Miller      Tobacco  probable,  in  tbe  sale  of  tbe  goods  of 

Manufactory  v.  Commerce,  45  N.  J.  tbe    parties,    tbat    one    will    be    mis- 

L.  18-18S3.  "  Neither  is  he  required  to  taken  for  the  other,  enough  is  shown 

prove  that  persons  have  actually  been  to  make  it  the  duty  of  the  court  to 

deceived,    and    that    his    adversary's  interfere"   (id.  pp.  167-8). 

goods  have  been  purchased  under  the  "96  U.  S.  245-54-1877;  24  L.  ed. 

belief  that  they  were'  his.     If  it  ap-  828. 

pears  that  the  resemblance  between  2S 1  Hem.  &  M.  259-1863. 

the    two    labels    is    such    that    it    is 


52  UxFAin  Business  Competition. 

The  opinion  opens  with  a  reference  to  it.  But  this  act  was  de- 
clared unconstitutional  by  the  Trade-mark  Cases.24  It  was  not 
until  18S1  that  a  valid  act  was  passed.  "What  influence  the 
statute  had  on  this  decision  it  is  not  possible  to  discover.  It 
is  somewhat  remarkable  that  in  so  important  a  case  as  this  the 
court  should  overlook  the  cases  just  referred  to  which  seem 
to  speak  so  distinctly  the  other  way.  It  would  seem  that  had 
these  cases  been  fully  considered,  some  clear  evidence  of  that 
consideration  would  appear  in  the  opinion. 

Following  McLean  v.  Fleming,  in  1890  the  court  decided 
Lawrence  Mfg.  Co.  v.  Tennessee  Mfg  Co.,27'  which  stands 
distinctly  for  the  necessity  of  proving  intent.  "  Undoubtedly 
an  unfair  and  fraudulent  competition  against  the  business  of 
the  plaintiff,  conducted  with  the  intent  on  the  part  of  the  de- 
fendant to  avail  itself  of  the  reputation  of  the  plaintiff  to  palm 
off  its  goods  as  plaintiff's,  would,  in  a  proper  case,  constitute 
ground  for  relief"  (p.  549).  This  statement  is  founded  on 
Putnam  Xail  Co.  v.  Bennett;-*  New  York  &  R.  Cement  Co. 
v.  Coplay  Cement  Co.;21  Wotherspoon  v.  Currie;2s  Thompson 
v.  Montgomery.^  The  court  then  added  (p.  551),  "  but  the 
deceitful  representation  or  perfidious  dealing  must  be  made 
out,  or  be  clearly  inferable  from  the  circumstances." 

In  1900,  Elgin  National  Watch  Co.  v.  Illinois  Watch  Co.30 
was  decided.  It  held  that  "  if  a  plaintiff  has  the  absolute  right 
to  the  use  of  a  particular  word  or  words  as  a  trade-mark,  then 
if  an  infringement  is  shown,  the  wrongful  or  fraudulent  in- 
tent is  presumed,  and  although  allowed  to  be  rebutted  in  ex- 
emption of  damages,  the  further  violation  of  the  right  of  prop- 
erty will  nevertheless  be  restrained.  But  where  an  alleged 
trade-mark  is  not  in  itself  a  good  trade-mark  yet  the  use  of 
the  word  has  come  to  denote  the  particular  manufacturer  or 
vendor,  relief  against  unfair  competition  or  perfidious  dealing 
will  be  awarded  by  requiring  the  use  of  the  word  by  another 

M100  U.  S.  82;  25  L.  ed.  550.  2S  5  L.  R.  H.  L.  Cas.  508-1872. 

25 138  U.  S.  537-1890;  34  L.  ed.  M41  Ch.  Div.  35-18S9. 

997;   11    Sup.    Ct.   396.  30179  U.  S.  665-71;  44  L.  ed.  365; 

26  43  Fed.  S00-1S90.  21  Sup.  Ct.  270. 

2744  Fed.  277-1S90;  10  L.  R.  A. 
833. 


Intent  to  Defeaud  —  Must  it  Be  Proved  ?  53 

to  be  confined  to  its  primary  sense  by  such  limitations  as  will 
prevent  misapprehension  on  the  question  of  origin.  In  the 
latter  class  of  cases,  such  circumstances  must  be  made  out  as 
will  show  wrongful  intent  in  fact,  or  justify  that  inference 
from  the  inevitable  consequences  of  the  act  complained  of." 
Various  state  and  federal  courts  have  adopted  a  similar 
rule  on  the  strength  of  these  cases.31 


31  Day  v.  Webster,  23  App.  Div. 
(N.  Y.)  601-1897;  49  N.  Y.  Supp. 
314.  There  was  no  question  of  tech- 
nical trade-marks  here.  Plaintiffs 
rested  upon  the  introduction  of  the 
respective  labels.  They  offered  no 
scintilla  of  evidence  tending  other- 
wise to  show  that  confusion  had 
arisen  from  the  two  labels.  Court 
held  labels  would  not  confuse  and 
refused  to  enjoin  and  that  fraud 
was  essence  of  action  for  unfair 
competition. 

Goodman  v.  Bohls,  3  Tex.  Civ. 
App.  183-S8-1S93;  22  S.  W.  11. 
"And  if  you  further  believe  that 
*  *  *  Goodman  placed  on  the 
market  in  said  county  of  El  Paso, 
and  sold  in  said  market  *  *  * 
packages  bearing  such  a  resem- 
blance to  said  package  of  the 
plaintiff  as  would  deceive  the  pur- 
chaser using  such  ordinary  care  as 
the  purchasers  would  exercise  ordi- 
narily in  purchasing  such  goods;  and 
if  you  further  believe  that  defend- 
ant used  such  mode  and  manner  of 
packing  said  tobacco  with  the  design 
to  sell  the  same  in  the  said  market 
as  the  tobacco  of  the  plaintiff  and 
thus  secure  a  sale  of  his  tobacco 
which  except  for  such  resemblance  to 
plaintiff's  packages  he  would  not  have, 
then  you  will  find  a  verdict  for  the 
plaintiff.  *  *  *  -If  the  defendant's 
packages  in  shape,  color,  material  of 
packages,    size,    marks,    and    devices 


should  so  far  resemble  those  of  the 
plaintiff's  as  would  be  apt  to  mis- 
lead the  class  of  customers  generally 
to  whom  the  same  is  sold  in  said 
market,  it  is  such  resemblance  as 
above  referred  to."  This  charge  up- 
held on  appeal.  , 
N.  K.  Fairbank  Co.  v.  Windsor, 
61  C.  C.  A.  233-1903;  124  Fed.  200- 
35  (C.  C.  A.  2d  Cir.).  In  unfair  com- 
petition cases  "  there  can  be  no  recov- 
ery unless  the  court  is  satisfied  that 
there  has  been  an  intent  on  the  part 
of  defendants  to  palm  off  their  goods 
as  plaintiffs.  In  many  of  these  un- 
fair competition  cases  the  fraudulent 
intent  is  inferred  from  the  facts, 
sometimes  against  the  sworn  pro- 
testations of  the  infringer  that  he 
was  trying  to  differentiate  his  pack- 
ages from  those  of  the  complainant 
not  to  simulate  them.  But  in  all 
cases  where  there  has  been  a  recov- 
ery, intentional  fraud  has  been 
found." 

Faber  v.  Faber,  124  Fed.  603- 
1903  (C.  C.  S.  D.  N.  Y.).  Decision 
by  Ray,  district  judge.  "Actions  to 
restrain  unfair  competition  in  trade, 
it  is  said,  are  based  essentially  upon 
fraud.  That  fraud  must  be  proved. 
It  cannot  be  inferred  from  unim- 
portant similarities  not  calculated  to 
mislead  the  purchaser.  (Kipling  v. 
G.  P.  Putnam's  Sons,  120  Fed.  631; 
65  L.  R.  A.  873)"  (at  p.  609).  The 
court  cites  Lawrence  Mfg.  Co.  v.  Ten* 


54  Unfair  Business  Competition. 

§  27.  Fraudulent  Intent  May  be  Presumed.— Intent  is  the 
state  of  mind  in  wliich  or  the  purpose  with  which  one  does  an 
act.  Again,  it  is  "  the  character  which  the  law  imputes  to  an 
act,  irrespective  of  the  personal  intention  of  the  actor. " 32  To 
prove  the  state  of  mind  of  the  defendant  when  the  acts  in  ques- 
tion were  done,  is  difficult  to  say  the  least  —  and  the  question 
practically  narrows  itself  down  in  many  cases  to  this :  What 
are  the  acts  on  which  the  law  will  impute  a  fraudulent  intent  to 
injure  a  rival 's  business ;  what  are  the  facts  on  which  the  law 
will  found  a  presumption  of  intent  to  defraud?  For,  although 
our  courts  do  not  admit  that  an  injunction  may  issue  where  no 
intent  to  do  so  is  shown,  they  do  go  far  to  raise  a  presumption 
of  such  intent  in  the  absence  of  specific  proof .32a 

§  28.  No  Actual  Proof  of  Intent  Necessary  for  Presump- 
tion j —  The  law  will  presume  an  intent  to  defraud  even 
when  there  is  an  utter  lack  of  proof  of  personal  intent 
to  deceive  on  the  part  of  the  defendant.  The  legal  intent, 
which  the  law  bases  upon  a  person's  acts  and  then  imputes 
to  him  personally,  may  exist  regardless  of  whether  he  actually 
intended  to  do  harmful  acts  or  not.  If,  for  instance,  one 
does,  innocently,  acts  which  are  likely  to  defraud  his  rival, 
and  on  learning  their  baleful  effect  he  continues  them,  the 
law  will  not  permit  him  to  say  his  personal  intent  was  to 
benefit  his  rival  or  not  to  injure  him.    Relief  in  actions  for 

nessee  Mfg.  Co.,  138  U.  S.  537-1890;  of  the  other,  accompanied  by  such 
34  L.  ed.  997 ;  11  Sup.  Ct.  396.  acts  and  devices  as  are  likely  to  do 
Lamont,  Corliss  &  Co.  v.  Hershey,  so,  or  such  duplication  in  form  and 
140  Fed.  763-4-1905  (Cir.  Ct.  N.  D.  dress  of  the  one  by  the  other  as  will 
Pa.).  Preliminary  injunction  denied  produce  a  confusion  calculated  to 
where  defendant  sold  chocolate  in  bring  this  about,  of  which  the  party 
packages  somewhat  similar  in  size,  complained  against  is  convicted  of 
shape,  color,  etc.,  to  complainant's,  being  willing  to  have  the  benefit." 
the  words  and  decoration  on  the  Paul  on  Trade-Marks  (p.  381):  "It 
wrappers  being  entirely  different.  (Equity)  will  not  enjoin  the  imita- 
""  To  make  out  a  case  of  unfair  and  tion  of  labels,  bill  heads,  and  corn- 
fraudulent  competition, —  an  effort,  mercial  names  of  a  rival  trade  un- 
in  other  words,  to  steal  the  trade  less  such  intentions  are  fraudulently 
built  up  by  another, —  there  must  be  designed,  and  have  a  tendency  to  oc- 
■an  actual  wrongful  intent  to  deceive  casion  damage." 
the  public  into  the  belief  that  the  32  Standard  Dictionary,  937. 
goods  of  the  one  party  are  the  goods  32a  Pleading  intent,  164  Fed.  842. 


Intent  to  Defbaud  —  Must  it  Be  Proved?  55 

unfair  competition  is  not  dependent  upon  actual  fraudulent 
intent,  where  the  conduct  of  defendant  would  be  likely  to  de- 
ceive purchasers  as  to  the  origin  of  the  goods.  "A  person  is 
ordinarily  held  to  intend  the  consequences  of  his  acts,  when 
he  understands  his  acts,  and  they  are  deliberate,  especially; 
and,  if  such  acts  by  a  business  competitor  are  calculated  to  de- 
ceive the  trade,  the  public,  and  the  user,  and  to  palm  off  the 
.goods  or  manufactures  of  such  person  for  those  of  his  com- 
petitor, and  such  is  the  actual  result,  and  such  person  refuses 
to  cease  such  conduct,  the  legitimate  conclusion  is  that  he  in- 
tended and  intends  to  cheat  and  defraud  not  only  the  com- 
petitor, but  the  trade,  the  general  public,  and  the  users  and 
consumers.    Such  acts,  persisted  in,  constitute  fraud."33 

§  29.  Knowledge  of  Plaintiff's  Rights  on  Part  of  the  De- 
fendant is  Unnecessary. — It  is  not  necessary  to  the  deceit  of 
a  purchaser,  within  the  meaning  of  these  cases,  that  he  should 
distinctly  recall,  wheu  buying  the  goods,  the  name  of  the  maker 
of  them  that  he  has  known  in  the  past.  Deceit  may  occur,  al- 
though the  buyer  did  not  recall  at  all  the  name  of  the  goods 
he  has  bought  before  or  their  maker.  The  injury  to  the  older 
line  of  goods  is  complete,  if,  in  any  way,  the  defendant  has  con- 
tinued to  substitute  his  own  goods  in  place  of  its  goods,  in  the 
hands  of  jyiirchasers  who  would  ordinarily,  except  for  the  act3 
of  the  defendant,  have  purchased  the  older  line  of  goods. 

It  was  held  in  Cartier  v.  Carlile?*  that  it  will  be  presumed 
that,  where  there  has  been  a  colorable  imitation  of  a  trade- 
mark, the  person  making  it  intended  to  imitate  the  genuine 
trade-mark,  though  he  knows  nothing  as  to  the  identity  of  its 
owner.  This  was  held  to  be  the  fact  in  the  Yorkshire  Relish 
case,35  where  this  commodity  was  made  and  sold  by  persons 
who  did  not  know  the  true  formula.  Many  persons  did  not 
know  who  were  the  original  makers  of  the  relish.  They  only 
knew  the  name.  It  was  held  fraudulent  for  others  to  so  use 
the  name  as  to  be  able  to  sell  their  goods  to  persons  who  de- 
sired the  true  Yorkshire.  In  such  a  situation  as  this,  it  does 
not  repair  the  injury  suffered  by  the  complainant  to  show 

S3  Faber  v.  Faber,  124  Fed.  603-10-  35  Birmingham      Vinegar     Brewery 

1903.  Co.  v.  Powell,   (1897  A.  C.  710,  66 

34  31  Beav.  292-1862.  L.  J.   (Ch.)  N.  S.  763-1897. 


5G  Unfair  Business  Competition. 

that  the  offending  article  was  put  upon  the  market  uninten- 
tionally, nor  does  the  knowledge  of  that  fact  give  any  as- 
surance that  in  the  future  these  damaging  conditions  will  be 
done  away  with.  The  law  is  content  with  proof  of  the  acts 
likely  to  deceive,  and  does  not  demand  proof  as  well  of  the 
state  of  mind  of  the  defendant  during  the  period  when  he  com- 
mitted the  alleged  unfair  acts. 

A  trader  adopts  a  name  or  brand  which  he  supposes  is  used 
by  no  one  except  himself.  It  turns  out  later  that  it  had  been 
in  use  by  another,  prior  to  his  adoption  of  it,  and  that  his 
continuing  to  use  it  will  result  in  injury  to  this  first  user.  It 
has  been  often  held  that,  in  such  a  situation,  the  rights  are  all 
with  the  first  user,  and  it  is  the  duty  of  the  one  who  later 
adopts  the  name  to  distinguish  his  use  of  it.30  To  use  the 
words  of  Judge  Holmes  in  the  Waltham  case :  ' '  The  plaintiff 
merely  on  the  strength  of  having  been  first  in  the  field,  may 
put  later  comers  to  the  trouble  of  taking  such  reasonable  pre- 
cautions as  are  commercially  practicable  to  prevent  their  law- 
ful names  and  advertisements  from  deceitfully  diverting  of 
plaintiff's  custom."37  This  being  so,  if  this  "later  comer  " per- 
sists in  using  the  name  or  threatens  to  do  so,  the  court  is  justi- 
fied in  assuming  he  does  so  with  fraudulent  intent.  Such  con- 
tinued action  on  his  part  will  raise  a  presumption  of  fraudulent 
and  deceitful  intent  or  purpose  to  pass  off  his  business  as  that 
of  the  original  user.38    Fraud  is  the  gravamen  of  the  proceed- 

38  American  Waltham  Watch  Co.  v.  goes.     Of  course  that  may  be   done 

United  States  Watch  Co.,  173  Mass.  unintentionally,    but    where    there    is 

85-1899;  53  N.  E.  141;  43  L.  R.  A.  a  manifest   and  natural  meaning  in 

826 ;  Neio  England  Awl  &  Needle  Co.  the  words   used,   that  the  goods  are 

v.  Marlborough  Awl   &   Needle   Co.,  the  goods  of  somebody  else,  and  the 

168  Mass.  154-1897;  46  N.  E.  386;  man  who  uses  these  terms  uses  not 

McAndrew  v.  Bassett,  4  De  G.  J.  &  S.  his  name  only,  but  somebody  else's, 

380-1S64.  he  would  be  stopped  from  doing  so 

37  American  Waltham  Watch  Co.  v.  as  soon  as  he  is  aware  of  the  facts 
United  States  Watch  Co.,  173  Mass.  which  make  the  prima  facie  inten- 
85-1899;  Nesne  v.  Sundet,  93  Minn.  tion  and  result  of  which  he  is  doing, 
209 ;  101  N.  W.  490-1904.  passing   off   his   goods   as   goods   of 

38  Turton  v.  Turton,  42  Ch.  Div.  somebody  else.  It  was  formerly  said 
128-41-2-1S99.  "  No  man  must  pass  that  no  action  could  be  maintained 
off  his  goods  as  the  goods  of  another.  unless  a  man  has  done  so  fraudu- 
That  is  the  principle  upon  which  it  lently    and    intentionally,    but    when 


Intent  to  Defraud  —  Must  it  Be  Proved?  57 

ing  based  on  unfair  competition.  This  fraud  must  be  shown 
against  the  defendant ;  but  tins  does  not  mean  that  it  must  al- 
ways be  proven  that  the  defendant  had  in  his  secret  mind  the 
distinct  intent  and  purpose  to  defraud  the  plaintiff.  "  The 
law  does  not  attempt  to  penetrate  the  secret  motives  or 
intent  with  which  the  act  is  done,  but  contents  itself  with 
the  conclusion  that  the  party  intended  the  natural  and  prob- 
able consequences  of  the  act."39 

Where  the  case  concerned  the  two  names  "  Chicago  Land- 
lords' Protective  Association  "  and  "  Chicago  Landlords' 
Protective  Bureau,"  Koebel  v.  Chicago  Landlord's  Pro- 
tective Association,40  it  was  held  that  "  The  law  undoubt- 
edly is,  that  the  complainant,  the  Chicago  Landlords' 
Protective  Bureau,  had  no  right  to  appropriate  to  it- 
self the  exclusive  use  of  that  name  to  the  exclusion  of 
the  right  of  the  defendants  to  use  the  descriptive  words 
i  Landlords'  Protective  Department,'  so  long  as  the  use  of 
those  words  was  with  a  legitimate  and  honest  purpose,  but 
whenever  defendants,  intentionally  or  otherwise,  took  ad- 
vantage of  the  similarity  of  the  name  adopted  by  them  to  the 
one  under  which  the  complainant  was  incorporated  and  had 
been  carrying  on  its  business,  to  mislead  the  public  or,  with- 
out explanation,  allowed  their  clients  to  be  misled  into  the 
belief  that  the  business  associations  were  one  and  the  same; 

he  finds  out  that  the  natural  con-  complainant's  use  of  the  name  de- 
struction of  what  he  is  doing,  when  fendants  had  announced  the  intention 
the  facts  are  known,  is  to  represent  to  use  this  name;  this  was,  however, 
his  goods  to  be  somebody  else's,  then  not  known  to  complainant;  and  de- 
he  would  be  stopped,  even  though  he  fendants  made  no  actual  use  of  the 
had  originally  done  that  unintention-  name  until  complainant's  first  season 
ally,  and  innocently."  was  over.  Held,  that  defendants 
Meldrum  v.  Shubert,  2  111.  Cir.  Ct.  should  be  enjoined  from  using  the 
Rep.  293-1904.  Complainant  leased  name,  and  that  it  was  not  necessary 
and  had  for  one  season  conducted  a  to  support  an  in  junction  that  it  should 
small  theatre,  chiefly  patronized  by  be  shown  that  pecuniary  loss  would 
residents  of  the  vicinity,  under  the  result  to  complainant  from  defend- 
name  of  the  "  Garrick  "  theatre.    De-  ant's  acts. 

fendants  then  leased  a  large  metro-  "  McCann    v.    Anthony,    21    Mo. 

politan   theatre,   formerly  known   as  App.  83-90-1886. 

the  "Dearborn"  theatre,  and  called  " 210  111.  176-1S2-3-1904 ;   71  N. 

it  the  "  Garrick  "  theatre.     Prior  to  E.  362. 


58  Unfair  Business  Competition. 

it  violated  the  lawful  rights  of  the  complainant  and  the 
plainest  principles  of  equity.  Fraud  is  the  gist  of  actions  of 
this  kind.  Courts  of  equity  will  never  enjoin  the  use  of 
generic  or  descriptive  words  in  a  trade-mark  or  a  business 
name  except  upon  an  allegation  and  proof  of  actual  fraud 
resulting  from  the  similarity  of  the  names,  tending  to  lead 
those  dealing  with  the  parties  to  believe  that  they  are  one 
and  the  same,  even  though  they  use  ordinary  care  to  dis- 
criminate between  them. " 41  *  *  *  "  We  think  the  true 
ground  upon  which  the  jurisdiction  of  a  court  of  equity  to 
restrain  the  defendants,  as  prayed  in  this  bill,  rests,  is  that  the 
name  assumed  by  the  defendants  is  so  similar  to  that  of  the 
complainant  as  to  mislead  and  confuse  the  public  mind  in  the 
city  of  Chicago  as  to  the  identity  of  the  business  in  which  the 
two  parties  were  engaged."42  Continuation  of  the  use  of  a 
name  after  the  defendant  knew  of  the  plaintiff's  prior  use 
is  sufficient  evidence  of  intent  to  defraud.43  If  a  person  at- 
tempts to  restrain  a  colorable  imitation,  and  he  cannot  prove 
that  the  defendants  have  tried  to  steal  his  trade,  he  must  show 
beyond  all  question,  that  the  goods  are  so  gotten  up  as  to  be 
calculated  to  deceive.44  Intent  to  deceive  may  not  render  one 
liable  for  unfair  competition,  even  if  deception  actually  occurs. 
Such  deception  is  not  proved,  if  the  imitation  is  in  features 

"  See  also  Ball  v.  Siegel,  116  111.  U.  S.  Mercantile  Rep.  &  Collecting 
137-1886;  4  N.  E.  667;  Elgin  Butter  Assn.,  21  Abb.  N.  C.  (N.  Y.)  115- 
Co.  v.  Elgin  Creamery  Co.,  155  111.  1888;  Matsell  v.  Flanagan,  2  Abb. 
127-1895;  40  N.  E.  616;  Allegretti  v.  Pr.  N.  S.  (N.  Y.)  459-1867;  Lamb 
Allegretti  Chocolate  Cream  Co.,  177  Knit  Goods  Co.  v.  Lamb  Glove  & 
111.  129-1898;  52  N.  E.  487;  Int.  Mitten  Co.,  120  Mich.  159-1899;  78 
Com.  Y.  W.  C.  A.  v.  Y.  W.  C.  A.  of  N.  W.  1072;  44  L.  R.  A.  841;  Sand- 
Chicago,  194  111.  194-1902;  62  N.  E.  ers  v.  Jacob,  20  Mo.  App.  96-1885; 
551.  Newby  v.  Oregon  Central  Ry.,  Deady 

"Investor  Pub.   Co.    v.   Dobinson,  (U.  S.  D.  Oreg.)   609-1869. 

72  Fed.  603-1896  (C.  C.  S.  D.  Cal.) ;  "Fuller  v.   Huff,   104  Fed.   141- 

Guardian  Fire  &  Life  Assur.  Co.  v.  1900   (C.  C.  A.);  51  L.  R.  A.  332; 

Guardian  &  Gen.  Ins.  Co.,  50  L.  J.  Orr  v.  Johnston,  13  Cb.  Div.  434. 

Cb.  N.   S.   253-1880;  Lee  v.  Haley,  "  Pay  ton  &  Co.  v.  Snelling,  Lam- 

L.   R,    5    Cb.    App.   Cas.   155-1869;  pard  &   Co.,    (1901)   App.  Cas.  308 

Knott  v.  Morgan,  2  Keene  213-1836;  (House  of  Lords). 
U.    S.   Mercantile   Reporting    Co.   v. 


Intent  to  Defkaud  —  Must  it  Be  Proved?  59 

common  to  the  trade,  and  not  in  points  that  are  peculiar  to  the 
goods  of  complainant.45 

§  30.  Denial  of  Intent  Will  Not  Avail  Defendant.— The 
denial  of  intent  to  injure  will  not  avail  a  defendant.  Under 
proper  circumstances  the  court  will  find  in  his  acts  evidence 
of  an  intent  to  defraud  even  in  the  face  of  his  most  explicit 
denial  that  he  ever  intended  to  pass  off  his  goods  as  those  of 
the  complainant.  "And  such  intent  may  be,  and  often  is,  made 
out,  not  from  direct  testimony,  but  as  a  clear  inference  from 
all  the  circumstances,  even  when  defendant  protests  that  his 
intention  was  innocent."  46  The  respondent  in  Wotherspoon  v. 
Currie 47  said :  "  There  is  no  reason  in  the  world  why  I  should 
take  the  name,  because  I  manufacture  something  superior,  and 
at  a  cheaper  price,  therefore,  why  should  I  take  the  name  of 
the  plaintiffs  !"  The  comment  of  the  Lord  Chancellor  on  this 
plea  was  this:  "  Well,  then,  one  naturally  asks,  why  should 
he  do  anything  to  lead  the  people  to  suppose  that  his  name  is 
to  be  in  any  way  associated  with  Glenfield,  or  this  inferior 
article  (as  he  says)  with  his."  The  court  in  Keller  v.  Goodrich 
Co.,48  citing  this  passage,  said:  "  So  may  we  ask  here,  why 
should  the  appellant,  doing  business  in  Fort  Wayne,  Indiana, 
do  anything  to  associate  his  name  with  Akron,  in  the  State 
of  Ohio1?  The  natural  presumption  is  that  he  expected  to 
derive  benefit  from  it,  and  secure  buyers  from  among  those 
who  had  bought  and  used  the  Akron  dental  rubber.  If  we 
may  assume,  as  we  justly  may,  that  he  intended  to  mislead, 
and  not  in  good  faith  to  convey  information,  we  must  carry 
this  assumption  to  its  logical  consequences,  and  assert  that 
his  act  was  likely  to  accomplish  what  he  intended  it  should." 

Not  only  will  fraudulent  intent  be  presumed  in  the  face  of 
the  defendant's  specific  disclaimer  of  such  intent,  but  it  will 
be  presumed  in  the  face  also  of  contract  provisions,  which 
would  tend  to  show  proper  motives,  when  the  court  is  satis- 
fied that  it  was  not  intended  by  the  parties  that  these  pro- 

40  United  States  Tobacco  Co.  v.  Mc-      Bell  Mfg.  Co.,  77  Fed.  869-1896,  at 
Greenery,  144  Fed.  531-1906  (C.  C.      p.  870  (C.  C.  A.  2d  Cir.). 
Mass.) ;  affd.  144  Fed.  1022.  47L.  R.  5  H.  L.  508-1872. 

48  N.   K.   Fairbank    Co.   v.   R.   W.  "  117  Ind.  556-60-1888;  20  N.  E. 

493. 


60  Unfair  Business  Competition. 

visions  should  be  carried  out.  In  R.  Heinisch's  Sons'  Co.  v. 
Bolter,4®  various  contracts  were  made  by  parties  to  the  action 
as  to  the  use  of  name  "  Heinisch."  It  appeared  that,  while 
the  ostensible  objects  of  the  contracts  were  not  carried  out,  the 
Heinisch  name  had  been  so  used  as  to  deceive  the  public. 
Held:  "  In  these  circumstances,  it  must  be  presumed  that  the 
defendants  contemplated  the  natural  consequences  of  their 
acts  irrespective  of  those  carefully  worded  provisions  of  said 
contract  which  apparently  were  never  intended  to  have  any 
effect."    See  §  102,  note  26. 

Assuming  that  up  to  the  time  an  injunction  is  asked,  the  de- 
fendant has  acted  with  entire  good  faith,  firmly  believing 
that  he  was  causing  no  injury  to  the  plaintiff  and  usurping 
none  of  his  rights,  still  he  will  be  enjoined.  His  opinion  as 
to  the  result  to  the  plaintiff  of  his  act  is  not  the  test,  and  it 
should  be  disregarded  by  the  court.  If  the  court  believes  the 
necessary  consequence  of  the  defendant's  action  is  deceit  and 
this  deceit  may  or  does  injure  the  plaintiff,  an  injunction 
should  issue.  The  owner  of  an  honest  business  reputation,  or 
of  a  valuable  brand  or  name,  is  entitled  to  protection  as  well 
against  persons  who  injure  him  innocently  as  against  those 
who  would  injure  him  intentionally.  In  Cuervo  v.  Landauer,50 
the  defendant  bought  labels  from  a  dealer  in  such  articles,  and 
did  not  know  that  in  using  them  he  would  interfere  with  the 
plaintiff's  business.  Nevertheless  it  was  held  he  should  be  en- 
joined. "  That  defendants  did  not  know  that  the  labels,  which 
they  bought,  as  they  aver,  from  a  cigar-box  maker  were  in- 
fringements, is  no  reason  for  refusing  the  relief  prayed  for. 
The  owner  of  a  trade-mark  is  entitled  to  protection  against 
ignorant  as  well  as  against  malicious  infringers." 

It  is  well  established  that  the  use  of  a  corporate  name  will 
be  enjoined,  which,  though  adopted  with  perfect  good  faith, 
is  calculated  to  confuse  and  deceive.  Ground  for  such  inter- 
ference is  to  be  found  in  the  detriment  to  the  complainant 
which  cannot  be  otherwise  remedied  or  reached;  and  further, 
if  it  is  shown  that,  although  innocent  of  fraudulent  intent 
at  the  outset,  on  being  apprised  of  the  injury  he  is  inflicting 

49  86  Fed.  765-69-1898    (C.  C.  S.  M63  Fed.  1003-1894  (C.  C.  S.  D. 

B.  N.  Y.).  N.  T.). 


Intent  to  Defraud  —  Must  it  Be  Proved?  '  61 

on  the  plaintiff,  the  defendant  continues  to  use  the  offending 
mark  or  name,  that  fact  will  warrant  a  very  strong  presump- 
tion of  deceitful  purpose  on  his  part.51 

§  31.  Proof  of  Specific  Orders  to  His  Agents  and  Servants 
to  Act  Fairly  Will  Not  Excuse  Defendant. —  Specific  instruc- 
tions to  salesmen  to  refrain  from  any  statements  or  represen- 
tations that  would  tend  to  mislead  will  not  prevent  this  pre- 
sumption from  arising  where  the  facts  otherwise  justify  it. 
Judge  Lacombe  has  said  in  Enterprise  Mfg.  Co.  v. 
Landers,  Frary  &  Clark,52  ''It  is  elementary  law  that, 
when  the  simulation  of  well-known  and  distinctive  fea- 
tures is  so  close,  the  court  will  assume  that  the  de- 
fendants intended  the  result  they  have  accomplished,  and 
will  find  an  intent  to  appropriate  the  trade  of  their  competitor, 
even  though,  in  their  instructions  to  their  own  selling  agents, 
they  may  caution  against  oral  misrepresentations  as  to  the 
manufacture  of  the  goods.  There  is  evidence  to  show  that 
purchasers  have  been  deceived  as  to  the  identity  of  these  mills, 
but,  in  the  case  of  a  Chinese  copy,  such  as  the  defendants  offer 
to  the  public,  such  proof  is  hardly  needed."53 

§  32.  Actual  Injury  to  Plaintiff  by  Defendant  Must  be  Im- 
minent.— Although  a  definite  intent  and  plan  on  the  part  of 
the  defendant  to  pass  off  his  goods  as  those  of  the  plaintiff 
and  to  injure  him  in  his  trade  be  clearly  shown,  yet  if  he 
never  provides  himself  with  the  actual  or  probable  means  of 
accomplishing  such  a  result  there  is  no  basis  for  a  cause  of 
action  on  the  ground  of  unfair  competition,  and,  in  such  a 
case,  no  presumption  of  intent  to  defraud  will  arise.54 

"  Van  Houten  v.  Hooton  Cocoa  &  E2 131  Fed.  240-1904  (C.  C.  A.  2d 

Chocolate  Co.,  130  Fed.  600-3-1904  Cir.). 

(C.  C.  N.  J.).     "While  innocent  of  "Dodge  Stationery  Co.  v.  Dodge, 

artifice  in  the  beginning,  the  refusal  145   Cal.   380-90-1904;  78  Pac.  879, 

of  the  defendants  to  grant  this  con-  that  it  is  quite  unimportant  whether 

cession,   and  their  insistence   on  the  the  defendant  used  the  name  Dodge 

continued  employment  of  that  which  with    fraudulent    intent   or   not.      If 

is  shown  to  be  objectionable,  and  can  the   necessary   result    was    deception, 

make  no  material  difference  to  them  the  fact  that  it  acted  with  an  honest 

on  any  honest  basis,  may  warrant  a  purpose  will  not  aid  it. 

somewhat   different  conclusion   as  to  M  They  "  never  used  any  means  cal- 

their  present  intention,  which  of  it-  culated    to    accomplish   it,    and    they 

self  might  call  for  relief."  adopted    those    admirably    suited    to 


62  Unfair  Business  Competition. 

"  The  intention  to  palm  off  one's  goods  as  those  of  another, 
and  the  nse  of  suitable  means  to  effect  that  intention,  are  both 
essential  elements  of  a  good  cause  of  action  for  unfair  com- 
petition. The  intention  alone,  without  the  actual  or  probable 
use  of  means  calculated  to  convey  a  false  impression  to  the 
public  mind,  and  to  mislead  and  deceive  the  ordinary  pur- 
chaser, furnishes  no  ground  for  relief,  because  an  intent  to 
injure,  where  no  injury  is  or  will  be  inflicted,  causes  no  legal 
damages."  55 

§  33.  Unimportant  Facts  not  a  Basis  of  Presumption  of 
Intent  to  Defraud. —  Furthermore,  presumption  of  fraud- 
ulent intent  must  be  based  on  facts  which  are  important.  ' '  It 
cannot  be  inferred  from  unimportant  similarities  not  calcu- 
lated to  mislead  the  purchaser."50  As  it  is  similarity  and 
not  identity  that  the  unfair  merchant  seeks,  the  apparently 
unimportant  features  sometimes  become  important.  He  is 
presumed  to  know  and  intend  the  necessary  consequences  of 
his  acts,  and  must  usually  answer  for  the  probable  and  or- 
dinary consequences  of  them.57 

§  34.  Presumption  of  Fraud  May  Arise  from  Similarity  of 
Name  or  Get  Up. —  Presumption  of  fraud  may  arise  from  use 
of  similar  names.  The  earlier  stand  taken  by  some  courts 
was  that  no  one  should  be  allowed  to  create  a  monopoly  of 
the  use  of  his  own  name,  to  the  use  of  which  others  who  bear 

defeat  it.     Their  intention,  therefore,  A.  1324 ;  N.  K.  Fairbank  Co.  v.  R.  W. 

becomes      immaterial."        Kann      v.  Bell  Mfg.  Co.,  77  Fed.  869-1896  (C.  C. 

Diamond    Steel    Co.,    89    Fed.    706-  A.  2d  Cir.)  ;  Kann  v.  Diamond  Steel 

1898,  at  p.  712  (C.  C.  A.  2d  Cir.);  Co.,  89  Fed.  706-1898  (C.  C.  A.  8th 

32    C.    C.    A.    324;    Hopkins   Trade-  Cir.);  32  C.  C.  A.  324. 

Marks,     p.     256;     Centaur     Co.     v.  6a  Faber  v.   Faber,  124   Fed.   603- 

Marshall,   97   Fed.   785-1899    (C.   C.  1903,  p.  609. 

A.    8th    Cir.);    38    C.    C.    A.    413;  "Every  man,   acting  intelligently, 

Postum     Cereal     Co.     v.     American  will  be  presumed  to  intend  the  neces- 

Health  Food  Co.,  119  Fed.  848-1902  sary      consequences      of      his      acts. 

(C.  C.  A.  7th  Cir.)  ;  56  C.  C.  A.  360.  Holmes,  Booth  &  Haijdens  v.  Holmes, 

55  Wrirsley   Co.  v.   Ioica  Soap   Co.,  Booth  &  Atwood  Mfg.  Co.,  37  Conn. 

122    Fed.   796-1903    (C.    C.    A.   8th  278-1870,  at  p.  296.    "  The  same  pre- 

Cir.) ;  McLean  v.  Fleming,  96  U.  S.  sumption    applies,    with    less    force 

245-1877;   24   L.   ed.   S2S;    Kann  v.  perhaps,   to   the   probable   and   ordi- 

Diamond    Steel    Co.,    89    Fed.    706-  nary  consequences." 
1898   (C.  C.  A.  8th  Cir.) ;  32  C.  C. 


Intent  to  Defraud  —  Must  it  Be  Proved1?  63 

it  may  be  equally  entitled.  In  these  cases  the  fact  was  over- 
looked that  the  honest  dealer  desires  a  name  which  can  be 
associated  only  with  his  own  particular  business  house  and 
which  cannot  by  any  chance  be  confused  with  the  name  of 
some  other  concern.  It  may  usually  be  presumed  that  where  a 
person  sets  up  a  business  under  a  name  similar  to  one  already 
in  use,  even  though  that  name  be  his  own,  he  is  not  taking  that 
name  because  it  is  necessary  to  take  it,  nor  because  using  it 
is  essential  to  his  success,  but  because  he  hopes  by  the  con- 
fusion resulting  from  using  it  to  get  for  himself  some  of  the 
trade  which  belongs  to  the  established  concern.  To  wish  to 
get  all  of  this  trade  he  can  is  not  condemned  by  the  law,  but 
to  try  to  get  it  by  creating  in  any  way  the  idea  in  the  minds 
of  the  public  that  his  concern  is  not  his,  but  the  older  house,  is 
rightly  condemned,  and  here  is  the  gravamen  of  the  injury 
which  is  the  result  of  his  use  of  the  name. 

Where  such  a  state  of  facts  as  this  is  found,  equity  does 
not  necessarily  wait  for  definite  proof  of  fraud,  but  will  pre- 
sume that  an  intent  to  create  confusion  and  to  defraud  was 
in  the  defendant's  mind  when  he  did  the  acts  complained  of. 
Those  who  honestly  desire  distinctive  reputations  for  their 
own  goods,  do  not  strive  to  so  get  them  up  as  to  be  likely  to 
resemble  other  goods  of  a  like  sort.  They  do  not  start  out  by 
adopting  the  most  individual  and  particular  features  of  the 
dress  and  makeup  of  a  rival's  goods.  Consequently,  when  a 
manufacturer  is  found  doing  this,  it  may  safely  be  presumed 
he  has  some  object,  some  definite  purpose  in  mind.  When 
it  is  further  found  he  has  expended  large  sums  in  advertising 
his  competitor's  distinctive  insignia,  a  similar  deduction  may 
be  made.  Any  facts  which  show  that  a  maker  or  vendor  of 
goods  strives  to  adopt  and  advertise  on  his  own  goods  or  in 
connection  with  his  own  goods,  distinctive  features  of  the 
goods  of  a  rival,  may  be  made  a  basis  of  a  presumption  of 
fraud.  Honest  rivals  do  not  copy.  Men  ambitious  to  succeed 
on  their  own  merits  do  not  spend  money  to  masquerade  as 
some  other  person  and  are  particular  to  avoid  anything  which 
promotes  a  knowledge  of  a  rival's  goods. 

Intent  is  a  subtle  thing;  it  cannot  be  seen,  and  can  only 
be  identified  by  acts  which  are  seen  and  which  are  prompted 


6-i  Unfair  Business  Competition. 

by  it.  The  statement  of  a  dealer  who  has  copied  the  get-up 
of  a  rival's  goods,  that  he  intends  to  keep  his  goods  as  in- 
dividual as  possible  and  not  to  injure  anyone,  falls  as  value- 
less, when  a  court  finds,  by  placing  his  goods  beside  those  of 
his  competitor,  that  it  is  difficult  to  tell  them  apart;  and  it 
must  be  presumed  he  intended  to  do  that  which,  if  they  are  to 
believe  their  eyes,  he  has  actually  done.  The  fact  that  the 
designer  of  the  offending  mark  was  an  expert,  or  was  a  man 
of  intelligence  and  experience,  will  be  taken  into  consideration 
in  judging  of  the  effects  of  the  acts  done  by  him.  The  Circuit 
Court  of  Appeals,  Second  Circuit,  has  very  aptly  described 
the  effect  of  a  simulation  from  which  intent  will  be  presumed, 
in  N.  K.  Fairbank  Co.  v.  R.  W.  Bell  Mfg.  Co.58  "  It  may 
fairly  be  assumed  that  the  individual  who  designed  defend- 
ant's yellow  and  black  package  was  an  expert,  familiar  with 
the  trade;  that  the  changes  he  made  in  the  old  package  were 
all  in  the  direction  of  complainant's  package  is  manifest;  that 
he  was  intelligent  enough  to  make  such  changes  in  order  to 
accomplish  a  definite  object  will  surely  not  be  disputed;  and 
that  such  object  was  the  production  of  a  package  resembling 
complainant's  is  the  irresistible  inference.  Business  men  of 
ordinary  acuteness,  who  wish  to  establish  a  distinctive  reputa- 
tion for  their  goods  with  the  general  public,  who  seek  to  have 
such  goods  so  arrayed  that  they  will  always  be  unmistakably 
recognized  by  the  public,  certainly  do  not  begin  by  assimilat- 
ing the  elements  of  their  design  to  those  of  some  one  com- 
peting manufacturer.  When  they  are  found  doing  this,  it 
must  be  assumed  that,  for  some  reason  or  other,  they  prefer 
to  have  their  goods  arrayed,  not  in  a  distinctive  dress,  but  in 
one  resembling  their  competitor's;  and,  when  it  appears  that 
such  competitor  has  expended  upward  of  $300,000  in  adver- 
tising his  packages,  that  reason  is  not  hard  to  find.  The  actions 
of  defendant's  own  officers  are  to  our  minds  strong  evidence 
that,  in  their  opinion  as  experts,  their  new  black  and  yellow 
package  was  one  likely  to  become  confused  in  the  minds  of 
the  public  with  the  existing  well-known  package  of  complain- 
ant. Men  act  from  motives,  and,  unless  the  new  style  of  pack- 
age was  devised  for  this  very  purpose,  no  motive  for  its  cre- 

M77  Fed.  SC9-77-1896   (C.  C.  A.    2d  Cir.). 


Intent  to  Defraud  —  Must  it  Be  Proved?  65 

ation  is  shown  in  the  record,  or  in  anywise  suggested.  That 
it  was  the  result  of  a  fortuitous  aggregation  of  elements  is  an 
hypothesis  which  cannot  for  one  moment  be  entertained.  It 
was  designed  by  an  intelligent  creator,  and,  so  far  as  we  can 
see,  for  but  a  single  purpose,  and  that  purpose  a  species  of 
competition  in  trade  which  courts  of  equity  hold  to  be  unfair. 
We  are  not  left  to  inferences,  however,  to  determine  whether 
that  purpose  has  been  accomplished.  In  many  cases,  where 
simulation  is  plain,  injunctions  have  been  issued  without  proof 
of  specific  instances  of  deception.  Such  evidence,  however,  is 
always  competent,  and  often  illuminative.  In  the  case  at  bar 
there  is  evidence  of  several  instances  where  purchasers  asking 
for  "  Gold  Dust  "  have  had  defendant's  soap  powder  palmed 
off  on  them,  being  deceived  by  the  general  appearance  of  the 
package.  More  persuasive,  however,  is  the  evidence  of  re- 
tail dealers  who  buy  from  defendant  and  sell  to  the  consumer. 
It  is  the  testimony  of  experts.  One  of  them,  a  grocer  in 
Wilkes-Barre,  Pa.,  testifies  that  defendant's  salesman,  as  an 
inducement  to  purchase,  called  his  attention  to  the  similarity 
of  the  packages,  and  the  possibility  of  passing  off  one  for  the 
other.  The  salesman  contradicts  this  statement,  and  we  give 
no  weight  to  it;  but  the  grocer  further  testifies  that  he  per- 
ceived the  resemblance,  bought  the  defendant's  soap  powder, 
and  has  repeatedly  passed  it  off  on  customers  who  asked  for 
11  Gold  Dust."  Another  grocer,  who  keeps  both  kinds  of 
powder,  testified  that  he  has  often  substituted  one  for  the 
other,  since  there  is  more  money  for  him  in  selling  the  de- 
fendant's at  the  same  retail  price,  as  it  costs  25  per  cent,  less 
at  wholesale;  that,  when  customers  asked  for  "  Gold  Dust," 
he  would  generally  go  to  the  shelves,  and  hand  them  defend- 
ant's soap  powder;  that  some  customers  were  not  deceived, 
but  that  the  packages  resemble  each  other  so  closely  that  a 
dealer  can  repeatedly,  in  most  cases,  substitute  one  for  the 
other;  and  that  he  has  known  personally  of  many  such  cases  " 
(id.  p.  877-78). 

§  35.  Presumption  of  Fraud  Arises  from  so  Selling'  Goods 

that    Vendees   May    Pass     Them     Off  Fraudulently.— The 

same  presumptions  which  arise  from  so  marketing  goods  as 

to   deceive  the  person  who  buys   at   retail,   will   arise  from 

5 


66 


Unfair  Business  Competition. 


facts  which  show  that  the  defendant's  acts  made  it 
possible  for  him  who  bought  the  goods  to  again  sell  them  in 
such  a  way  as  to  deceive  the  ultimate  purchaser.59 

That  evidence  of  intent  is  difficult  to  get,  need  not  be  argued. 
The  court  is  forced  to  look  to  small  details  of  the  conduct 
of  the  defendant  oftentimes  to  find  evidence  of  his  real  intent. 
North  imitated  underwear  made  in  a  special  manner  by 
Scriven, —  and  his  salesmen  distinguished  between  "  a  '; 
Scriven  drawer,  meaning  one  made  after  the  pattern  of 
Scriven 's,  and  "  the  "  Scriven  drawer  —  meaning  one  made 
by  Scriven  himself.  This  and  collateral  facts  were  held  a 
basis  for  a  presumption  of  fraud  by  the  Circuit  Court  of 
Appeals  in  1904.60 


M  New  England  Awl  &  Needle  Co. 
v.  Marlborough  Awl  &  Needle  Co., 
168  Mass.  154-55-1897;  46  N.  E. 
386.  Plaintiff  used  a  bronze  colored 
box,  with  brown  label  on  top  and 
one  side  with  printed  inscriptions, 
tied  with  orange  string.  Defend- 
ants used  box  indistinguishable  in 
every  way  except  that  instead  of  the 
words  "  Manufactured  and  warranted 
by  the  New  England  Awl  &  Needle 
Company,  West  Medway,  Mass.,"  it 
bore  the  words  "  Manufactured  by 
the  United  States  Awl  &  Needle  Co., 
New  York."  Plaintiff  had  used  their 
box  for  twelve  years  at  time  of  ac- 
tion and  defendant  two  years.  Held 
by  Judge  Holmes  that  defendant 
contended  he  "  did  not  intend  to  de- 
ceive the  public  by  passing  off  their 
goods  for  the  plaintiff's,  but  this 
must  be  taken  pretty  strictly.  They 
knew  that  they  were  putting  the 
power  to  do  so  into  the  retail  deal- 
ers' hands.  It  can  hardly  be  doubted 
that  they  contemplated  that  the 
wholesale  dealer  at  whose  request 
they  put  up  their  awls  in  this  form, 
with  full  knowledge  of  the  plaintiff's 
prior  use,  would  or  might  try  to  de- 


ceive  the   public,   and  whether  they 
did  or  not  is  immaterial." 

"Scriven  v.  North,  134  Fed.  366- 
74-1904;  67  C.  C.  A.  348.  "There 
is  little  direct  testimony  connecting 
the  defendants  or  their  authorized 
agents  with  any  positive  acts.  In 
the  nature  of  things  this  would  be  so, 
for  persons  about  to  engage  in  un- 
lawful or  questionable  undertakings 
are  not  likely  to  proclaim  their  pur- 
poses on  the  house-tops;  but  there  is 
some  testimony  which  tends  to  show 
that  the  defendants  directly,  through 
their  authorized  agent,  endeavored  to 
market  their  goods  under  the  guise 
of  the  complainants',  and  that  is  the 
testimony  of  Anderson,  who  was  the 
manager  of  the  New  York  branch 
for  several  years  prior  to  January 
1,  1902.  He  says  that  he  kept  a 
sample  of  the  Scriven  drawer  on  the 
counter  in  the  New  York  office;  that 
when  customers  came  in  and  asked 
for  an  elastic  seam  drawer  he  would 
sell  them  defendants' ;  if  they  asked 
for  '  The  Scriven  drawer,'  he  would 
show  them  defendants'  and  sell  it; 
and  so  if  they  asked  for  a  No.  50. 
The  following  questions  and  answers 


Intent  to  Defraud  —  Must  it  Be  Proved1? 


67 


A  further  idea  of  what  a  court  will  consider  sufficient  evi- 
dence of  intent  may  be  found  in  Bickmore  Gall  Cure  Co.  v. 
Karns,  where  the  use  of  a  name  similar  to  plaintiff's  and 
other  acts  of  the  defendant  were  held  to  warrant  a  presump- 
tion of  fraud.61    Here  it  was  held  also  that  a  court  would  not 


illustrates  the  method :  "  Then  you 
made  a  difference  between  "  a " 
Scriven  drawer  and  "  the "  Scriven 
drawer,  is  that  it?  A.  Yes;  when  a 
man  asked  for  a  Scriven  drawer,  I 
knew  that  he  wanted  the  side-seam 
drawer,  and  I  showed  him  ours.  Q. 
And  sold  him  yours?  A.  Yes,  sir.' 
And  in  another  answer  he  says :  '  We 
had  a  sample  of  the  Scriven  drawer 
on  our  counter,  and  I  have  said  that 
it  was  made  the  same  as  Scriven's 
drawer,  with  the  exception  of  the 
crotch  pieces  in  the  seat.'  The  in- 
ference seems  to  be  clear  that  this 
sample  of  Scriven's  drawers  was 
kept,  not  for  the  purpose  of  show- 
ing the  difference  between  the  two, 
but  to  show  the  absolute  identity  be- 
tween them,  so  that  purchasers, 
mainly  jobbers,  who  bought  to  sell 
again,  could  see  that  the  defendants' 
were  such  an  imitation  of  the  Scriven 
drawers  that  they  could  easily  be  sold 
again  as  genuine  Scriven." 

ai  Bickmore  Gall  Cure  Co.  v.  Karns, 
134  Fed.  833-1905;  67  C.  C.  A.  439. 
"  The  appellant  spent  a  considerable 
sum  in  advertising,  and  had  finally 
succeeded  in  establishing  a  profitable 
trade,  when  the  appellees  attempted 
to  appropriate  the  phraseology  which 
it  had  long  used,  and  so  to  reap  the 
benefit  of  its  efforts  and  expendi- 
tures. They  learned  that  the  law 
would  not  permit  this  to  be  done, 
and  they  made  some  changes;  but 
they  were  only  *  colorable.  The 
"wrongful  purpose  was  neither  aban- 


doned nor  hindered.  It  was  only 
more  speciously,  but  still  potently, 
pursued.  In  consequence  of  its  long- 
continued  use  of  the  picture  of  a 
working  horse,  in  connection  with  the 
phrase,  '  Be  sure  to  work  the  horse,' 
the  appellant's  remedy  had  become 
well  known  as  '  Work  the  Horse  Gall 
Cure,'  before  the  appellees  applied  to 
their  remedy  the  picture  of  four 
working  horses  in  connection  with 
the  words  '  Four  Horse  Gall  Cure,' 
and  the  phrase  'Always  work  the 
horse  while  using  the  cure.'  These 
matters,  with  some  slight  and  unim- 
portant variations,  prominently  ap- 
pear upon  their  several  packages, 
circulars,  display  cards  and  direc- 
tions. Their  larger  boxes,  in  which 
the  smaller  ones  are  delivered  to 
dealers,  are  of  substantially  the 
same  size,  and  of  exactly  the  same 
shape,  as  those  of  the  appellant. 
Both  are  yellow  or  yellowish  in  color ; 
and  the  smaller  boxes,  in  which  the 
respective  salves  are  sold  at  retail, 
present  like  features  of  correspond- 
ence. *  *  *  The  true  question  is  not 
whether  the  boxes,  circulars,  adver- 
tisements, and  directions  of  the  ap- 
pellees are,  in  their  details,  the  same, 
or  nearly  the  same,  as  those  of  the 
appellant,  but  whether  the  general 
effect  produced  by  those  of  the  ap- 
pellees is  such  as  would  be  likely  to 
lead  ordinary  purchasers  to  accept 
their  gall  cure  as  being  that  of  the 
appellant;  and  our  consideration  of 
the  evidence,  and  especially  that   of 


68  Unfair  Business  Competition. 

Test  its  decision  on  a  minute  comparison  of  the  detail  of 
labels,  boxes  and  names,  but  on  the  general  impression  that 
all  these  features  make. 

§  36.  Presumption  May  be  Based  on  Manner  in  which  the 
Truth  is  Told. —  (Speaking  the  truth  will  sometimes  furnish 
a  basis  for  a  presumption  of  fraud.  Causing  salesmen  to 
make  equivocal  or  literally  true  statements  to  customers  in 
such  a  way  as  to  confuse  them,  or  creating  subtle  distinctions 
between  brands  of  goods,  in  dealing  with  purchasers  or  ask- 
ing customers  which  of  two  brands  of  goods  they  wish,  when 
the  dealer  knows  they  are  aware  of  the  existence  of  but  one, 
will  create  such  a  presumption. 

Defendant  had  been  enjoined  from  use  of  "  Baker's  Choco- 
late," etc.,  without  distinguishing  between  "  W.  H.  Baker's 
Chocolate  "  and  "  Walter  Baker's  Chocolate."  Thereupon 
he  told  his  clerks  to  ask  customers  which  chocolate  they 
wanted  —  ' '  We  have  two  Bakers.  Which  do  you  want,  W.  H. 
or  Walter  Baker?  "  Nine  out  of  ten  would  answer  "  which 
ever  is  best."  Salesmen  would  then  give  them  W.  H.  Baker's. 
The  court  said:  "  The  purchaser  was  entitled  to  that  which  he 
demanded,  to  that  which  had  been  approved  to  his  taste  by 
experience  or  which  he  had  been  recommended  to  purchase. 
In  the  market  there  were  no  two  Baker's  products.     There 

the  exhibits,  has  irresistibly  led  us  to  it  sufficiently  shown  that,,  in  at  least 
the  conclusion  that  it  is.  The  com-  some  of  the  instances  to  which  it 
plainant  would  have  been  entitled  to  relates,  the  object  designed  was  ac- 
protection  against  the  attempt  to  de-  complished."  Hildreth  v.  McDonald, 
prive  it  of  its  trade  or  customers  164  Mass.  16-1895;  41  N.  E.  56. 
even  if  it  had  not  proved  that  such  Plaintiff  put  up  candy  in  paper  and 
attempt  had  been  successful."  Mc-  printed  word  "  Velvet "  in  red  let- 
JLean  v.  Fleming,  96  U.  S.  245-1877;  ters  on  end  of  papers  and  in  middle. 
24  L.  ed.  828.  "  The  means  devised  Defendant  used  combination  of  size 
to  that  end  were  well  calculated  to  and  shape  of  candy,  which  it  had  a 
mislead,  and  it  was  not  essential  that  right  to  do.  But  hi  addition  it  be- 
any particular  person  should  have  gan  to  print  in  Roman  letters  instead 
been  actually  misled."  Schener  v.  of  script  the  word  "  McDonald "  in 
Muller,  74  Fed.  225-1S96 ;  20  C.  C.  red  ink  in  middle  of  its  wrapper  and 
A.  161;  Swift  &  Co.  v.  Brenner,  125  not  on  ends.  Held,  public  were  de- 
Fed.  826-1903  (C.  C.  S.  D.  N.  Y.).  ceived  and  that  the  resemblances  were 
"'But  we  may  add  without  referring  to  not  accidental, 
the  testimony  in  detail,  that  we  think 


Intent  to  Defraud  —  Must  it  Be  Proved?  69 

was  but  one,  and  that  was  the  product  of  Walter  Baker  &  Co., 
Limited.  The  courts  had  enjoined  William  Henry  Baker  from 
using  the  word  "  Baker  "  alone,  and  had  required  to  be  prom- 
inently placed  upon  each  package  the  statement  that  "  W.  H. 
Baker  is  distinct  from  the  old  chocolate  manufactory  of  Walter 
Baker  &  Company."  No  such  statement  or  representation 
by  the  appellee  was  directed  to  be  made  to  the  inquirer  for 
"  Baker's  Chocolate  "  or  "  Baker's  Cocoa."  Instead  there 
is  manifested  a  clear  design  to  mislead  and  confuse  the  pro- 
posing purchaser  with  the  statement  that  there  were  two 
Baker  products  in  the  market.  The  court  here  says : 
' '  We  do  not  mean  to  say  that  it  is  not  within  the  province  of 
the  seller  to  represent  to  the  proposing  purchaser  that  an- 
other article  which  he  has  is  superior  in  excellence  to  that 
which  is  called  for,  and  to  induce  him  by  proper  argument  or 
statement  to  purchase  the  other,  but  he  must  not  represent 
such  other  to  be  the  product  which  the  purchaser  called  for. ' ' 62 

"Baker    v.    Slack,    130    Fed.    514  (C.  C.  A.). 


CHAPTER  III. 

What  is  Similarity? 

Section  37.  Test  of   similarity   is   general  impression   made,   not   detailed 
examination. 

38.  Similarity  does  not  mean  exact  likeness. 

39.  Care  used  by  average  buyer    of  tbe  class  of  article  in  question 

must  be  considered. 

40.  Character  of  the  article  and  the  habits  and  intelligence  of  the 

consumer. 

41.  Comparison  is  not  the  test  of  similarity. 

42.  Imitation  of  salient  features. 

43.  Necessary   physical   requirements  of   the   article  must   be   con- 

sidered. 

44.  Distance    between    competitors    a    factor    in    deciding    as    to 

similarity. 

45.  Deceit  of  ultimate  purchaser,  not  of  middleman,  is  the  important 

consideration. 

46.  Similarity  of  color,  shape,  size,  etc. 

47.  Similarity  of  names. 

While  it  is  difficult  to  define  Similarity  generally,  it  may  be 
said  that  if  the  offending  article  is  calculated  to  deceive  or- 
dinary purchasers  buying  with  the  ordinary  care  exercised 
in  such  transactions,  Similarity  usually  exists. 

So  long  as  there  are  many  chancellors,  so  long  will  their 
opinions  on  such  a  question  differ.  The  New  Jersey  court  of 
equity  has  laid  down  the  following  rule,  but  it  is  qualified  by 
the  court  in  the  case  in  which  it  is  enunciated:  "  If  the 
counterfeit  so  closely  resembles  the  genuine  as  to  mislead  or- 
dinary purchasers,  buying  with  the  care  usually  exercised  in 
such  transactions,  the  use  of  the  counterfeit  should  be  pro- 
hibited. An  important  part  of  this  rule,  as  it  applies  to  this 
case,  is  that  clause  of  it  which  directs  that,  in  determining 
whether  the  counterfeit  so  closely  resembles  the  genuine  to  be 
likely  to  deceive  the  ordinary  buyer,  the  court  must  take  into 
consideration  the  degree  of  care  which  buyers  usually  exercise 
in  buying  such  an  article  as  that  which  is  the  subject  of  the 
distinguishing  mark;  for  it  is  a  matter  of  common  knowledge 

[70] 


What  is  Similarity?  71 

that  the  ordinary  buyer  does  not,  as  a  general  rule,  exercise  as 
much  caution  in  buying  an  article  for  which  he  pays  a  few 
pennies  as  ho  does  in  purchasing  a  more  valuable  thing.  The 
instances  are  very  rare,  I  suppose,  where  a  purchaser  exer- 
cises as  much  care  in  buying  a  bottle  of  beer  as  he  does  in 
buying  a  bottle  of  whiskey,  a  box  of  cigars,  or  a  hat  or  a  coat."  * 
In  Payton  $  Co.  v.  Snelling,  Lampard  &  Co.,2  Lord  Mac- 
naghten  said :  "I  think  it  very  desirable  to  bear  in  mind 
what  Lord  Cranworth  said  on  one  occasion  —  that  no  general 
rule  can  be  laid  down  as  to  what  is  a  colorable  imitation  or 
not;  you  must  deal  with  each  case  as  it  arises,  and  have  re- 
gard to  the  circumstances  of  the  particular  case." 

Similarity  is  like  an  equation  of  which  the  one  known  side 
is  some  large  number,  which  is  composed  of  many  multiples 
and  many  combinations  of  numbers.  The  equation  may  be 
made  up  in  very  many  ways.  So,  in  a  multitude  of  ways,  a 
similarity  of  names  or  marks,  within  the  definition  of  the  word 
here  used,  may  be  created.3 

§  37.  Test  of  Similarity  is  General  Impression  Made,  Not 
Detailed  Examination. —  In  deciding  as  to  what  is  or  is  not 
similar,  the  court  should  not  depend  on  elaborate  description 
of  the  points  of  resemblance  or  those  of  difference ;  but  should 
decide  by  the  impression  created  by  the  name  or  mark  on  the 
ear  or  eye,  thus  deciding  the  question  on  the  same  basis  as 
the  purchaser  who,  in  ordinary  course  of  trading,  is  called 
upon  to  judge  as  to  the  identity  of  the  defendant's  name. 
It  should  be  said  here  also  that  the  buyer  usually  has  not 
the  chance  of  trial  by  side-by-side  comparison.  Such  similar- 
ity as  will  deceive  is  that  likeness  which  renders  the  average 
buyer  unable  to  distinguish  the  defendant's  name  or  mark 

1  Wirtz  v.   Eagle   Bottling   Co.,  50  say  that  no  trader  can  adopt  a  trade- 

N.  J.  Eq.  164-1S92.  mark,  so  resembling  that  of  another 

3  (1901)  App.  Cas.  30S-10.  trader,  as  that  ordinary  purchasers, 

8  McLean    v.    Fleming,    96    U.    S.  buying    with    ordinai*y    caution,    are 

245-51-1S77;  24  L.  ed.  828.    "What  likely    to    be    misled."      Kroppf    v. 

degree  of  resemblance  is  necessary  to  Furst,  94  Fed.  150-1-1899  (C.  C.  N. 

constitute     an     infringement     is     in-  J.);  "Similarity  which  will  warrant 

capable  of  exact  definition,  as  appli-  the  interference  of  the  court  must  be 

cable  to  all  cases.  -All  that  courts  of  determined  by  the  circumstances   of 

justice  can  do,  in  that  regard,  is  to  each  case." 


72  Unfair  Business  Competition. 

from  the  memory  of  the  plaintiff's  name  which  he  carries  in 
his  mind,  not  such  as  will  enable  him  to  know  them  apart  when 
the  two  are  put  side  by  side  before  him. 

Lord  Russell,  in  Liebig's  Extract  of  Meat  Co.  v.  Chemists 
Co-operative  Society,  decided  by  the  British  Court  of  Appeal 
November  20,  1896,4  held  that  "  one  must  be  guided  very 
largely  by  the  judgment  one  forms  by  the  use  of  one's  own 
eyesight. ' ' 

Fischer  v.  Blank5  holds  that  similarity  is  such  resemblance 
as  "is  calculated  to  deceive,  and  does,  in  fact,  deceive  the  or- 
dinary buyer  making  his  purchases  under  ordinary  conditions 
which  prevail  in  the  conduct  of  the  particular  traffic  to  which 
the  controversy  relates.  No  inflexible  rule  can  be  laid  down. 
Each  case  must  be  a  law  unto  itself."6  It  has  been  held, 
however,  that  direct  comparison  of  the  articles  is  a  test  of 
similarity.  "  The  eye,  at  a  glance,  takes  in  the  whole  of  one 
exhibit  and  the  whole  of  another;  and  the  comparison  thus 
made  is  the  surest,  and  only  satisfactory  way  of  satisfying 
the  judgment  as  to  the  existence  of  the  alleged  deceptive 
imitation."7 

§  38.  Similarity  Does  Not  Mean  Exact  Likeness. —  Sim- 
ilarity does  not  mean  exact  likeness  —  exact  facsimile  —  a 
precise  copy.  If  the  court  decides  the  likeness  is  sufficiently 
near  to  cause  deception  of  the  ordinary  purchaser,  this  is 
enough.  It  need  not  be  such  an  imitation  that  the  two  cannot 
be  distinguished  except  by  an  expert  or  upon  a  critical  exami- 

4 13  R.  P.  C.  736-38.     See  also  p.  and  hearing,  and  that  it  is  possessed 

635  for  case  below.  of  a  sufficient  amount  of  intelligence 

" 138  N.  Y.  244-52-1893 ;  33  N.  E.  to    note    the    difference    which    the 

1040.  senses  convey.     The  court  ought  not 

8  Cited  in  Dunn  Co.  v.  Trix  Mfg.  to  interfere  with  the  freedom  of  con- 
Co.,  50  App.  Div.  (N.  Y.)  75-1900;  duct  of  trade  and  with  general  busi- 
63  N.  Y.  Supp.  333;  Munro  v.  ness  competition.  Its  power  to  re- 
Tousey,  129  N.  Y.  38-43-1891;  29  strain  should  be  reserved  to  prevent 
N.  E.  9;  14  L.  R.  A.  245n.  "A  fraud  and  imposture  from  some  real 
court  of  equity  should  proceed  in  the  resemblance  in  the  name  and  appear- 
exercise  of  its  power  with  a  wise  and  ance." 

judicial  discretion.     In  cases  such  as  7  Lorillard  Co.   v.   Peper,  86   Fed. 

this,  it  should  presume  that  the  pub-  956-1898,   at   p.   958    (C.   C.   A.  8th 

lie  makes  use  of  the  senses  of  sight  Cir.). 


What  is  Similarity?  73 

nation  by  a  person  who  knows  the  genuine  article  well.  It  is 
sometimes  even  sufficient  that  there  are  points  of  resemblance. 
The  Supreme  Court  of  the  United  States  has  discussed  this 
question  in  McLean  v.  Fleming?  as  regards  infringement, 
but  what  is  there  said  applies  to  the  general  question  of  simi- 
larity in  all  cases  of  this  sort. 

"  Much  must  depend,  in  every  case,  upon  the  appearance 
and  special  characteristics  of  the  entire  device;  but  it  is 
safe  to  declare,  as  a  general  rule,  that  exact  similitude  is  not 
required  to  constitute  an  infringement,  or  to  entitle  the  com- 
plaining party  to  protection.  If  the  form,  marks,  contents, 
words,  or  the  special  arrangement  of  the  same,  or  the  general 
appearance  of  the  alleged  infringer's  device,  is  such  as  would 
be  likely  to  mislead  one  in  the  ordinary  course  of  purchasing 
the  goods,  and  induce  him  to  suppose  he  was  purchasing  the 
genuine  article,  then  the  similitude  is  such  as  entitles  the  in- 
jured party  to  equitable  protection  "  (id.  p.  253).  *  *  * 
"  Difficulty  frequently  arises  in  determining  the  question  of 
infringement;  but  it  is  clear  that  exact  similarity  is  not  re- 
quired, as  that  requirement  would  always  enable  the  wrong- 
doer to  evade  responsibility  for  his  wrongful  acts.  Colorable 
imitation,  which  requires  careful  inspection  to  distinguish  the 
spurious  trade-mark  from  the  genuine,  is  sufficient  to  main- 
tain the  issue ;  but  a  court  of  equity  will  not  interfere  when  or- 
dinary attention  by  the  purchaser  of  the  article  would  enable 
him  at  once  to  discriminate  the  one  from  the  other.  Where 
the  similarity  is  sufficient  to  convey  a  false  impression  to 
the  public  mind,  and  is  of  a  character  to  mislead  and  deceive 
the  ordinary  purchaser,  in  the  exercise  of  ordinary  care  and 
caution  in  such  matters,  it  is  sufficient  to  give  the  injured  party 
a  right  to  redress." 

Here  again  is  seen  the  great  necessity  of  equity's  refraining 
from  laying  down  exact  rules  and  limits  which  it  will  enforce. 
To  be  able  to  do  justice  in  all  cases,  it  must  be  governed  by 
elastic  doctrines.9 

*96  U.  S.  245-55-1877;  24  L.  ed.  the  symbol,  etc.     *     *     *     should  be 

828.  a   facsimile,   a   precise   copy,   of   the 

9  Colman  v.  Crump,  70  N.  Y.  573-  original   trade-mark,   or  so    close  an 

78-1877.     "  It  is  not  necessary  that  imitation  that  the  two  cannot  be  dis- 


74  Unfair  Business  Competition. 

§  39.  Care  Used  by  Average  Buyer  of  the  Class  of  Article 
in  Question  Must  be  Considered. —  Similarity  such  as  will 
deceive  the  critical,  well-posted  buyer  is  not  the  degree  of  like- 
ness necessary  to  this  action.  It  is  the  buyer  who  uses  ordi- 
nary caution  in  making  his  purchase,  who  is  buying  with  the 
care  usually  exercised  in  such  transactions,  who  must  be  de- 
ceived by  this  similarity.  He  who  buys  a  bottle  of  ale  does 
not  use  as  much  care  as  he  who  buys  a  watch.  He  who  buys  a 
handkerchief  does  not  usually  examine  the  goods  offered  him 
as  carefully  as  he  who  purchases  a  suit  of  clothes,10 

The  class  of  persons  who  will  purchase  an  article  must  be 
considered,  in  deciding  as  to  what  constitutes  similarity. 
Names  made  up  of  technical  words  may  be  entirely  distinct 
to  the  scholar's  eye  and  ear  and  yet  to  an  unlearned  person 
they  would  seem  the  same.11 

The  maker  of  goods,  in  choosing  a  name,  is  not  bound  to 
insure  the  negligent  buyer.  .  Neither  he  nor  his  competitor 
has  a  right  to  the  monopoly  of  the  trade  of  the  careless  or 
heedless  or  of  those  who  have  no  preference  as  to  which  brand 
of  goods  they  purchase.  The  law  of  unfair  trade  is  intended 
to  protect  those  who  are  careful  —  discriminating  —  in  their 
buying  and  who  have  preferences  as  to  what  they  buy.  Yet, 
as  has  been  said,  the  buyer  must  be  considered  as  he  exists; 
and  if,  in  the  case  of  certain  kinds  of  goods,  he  is  known  to  be 
heedless  that  fact  should  be  considered. 

The  method  of  selling  the  goods,  and  the  ordinary  circum- 
stances attending  their  sale  must  be  kept  in  mind.  While 
the  court  is  not  bound  to  interfere,  where  ordinary  attention 
will  enable  the  purchasers  to  discriminate  between  the  trade- 
marks used  on  the  goods  manufactured  by  different  parties, 
nevertheless,  the  character  of  the  article,  as  well  as  the  use  to 

tinguished   except   by   an   expert,   or  to  relief."    See  also  Tallcot  v.  Moore, 

upon    a  critical   examination  by   one  0  Hun,  106-1875. 

familiar  with  the  genuine  trade-mark.  10  Wirtz  v.   Eagle  Bottling  Co.,  50 

•     *     *     If  the  resemblance  is  calcu-  N.  J.   Eq.  161-1892;   21     Atl.   658; 

lated  to  deceive  the  careless  and  un-  Fairbank   Co.   v.   Bell  Mfg.   Co.,  77 

wary  and  thus  injure  the  sale  of  the  Fed.  869-1896. 

goods  of  the  proprietor  of  the  trade-  "  Fairbank   Co.  v.   Bell  Mfg.   Co., 

mark,   the  injured   party   is   entitled  77  Fed.  869-1 S96  (C.  C.  A.  2d  Cir.). 


What  is  Similarity?  75 

which  it  is  put,  the  kind  of  people  who  are  likely  to  ask  for 
it,  and  the  manner  in  which  it  is  probable  it  will  be  ordered,, 
must  not  be  lost  sight  of.12 

§  40.  Character  of  the  Article,  and  the  Habits  and  Intel- 
ligence of  the  Consumer. —  The  true  similarity  is  the  like- 
ness by  which  the  ordinary  purchasers,  buying  with  ordinary 
caution,  are  likely  to  be  misled.13  The  perceptions  of  the  ex- 
tremely stupid  or  extremely  brilliant  mind  are  not  to  be  con- 
sidered. The  law  presumes  that  the  purchaser  whom  it  must 
protect  en  masse,  is  a  man  of  ordinary  intelligence  and  sense, 
and  it  is  further  presumed  that  in  the  buying  he  will  use  or- 
dinary care  —  no  more,  no  less.  Still  in  considering  whether  or 
not  one  device  is  similar  to  another,  it  is  extremely  important 
to  know  the  intellectual  capacity  of  the  purchasers  who  will 
be  called  on  to  distinguish  them.  This  is  of  least  importance 
in  cases  involving  two  labels  composed  wholly  of  printed  mat- 
ter, which,  of  course,  means  nothing  to  those  who  cannot  read. 
On  the  other  hand,  two  marks  composed  of  a  device  made  of 
two  elephants,  for  instance,  with  printed  matter,  might  appear 
entirely  different  to  one  who  could  read,  while,  to  one  who 
could  not  read,  they  might  seem  exactly  alike.  Differences  in 
a  wrapper  for  a  college  man's  scarf  which  might  with  entire 
justice  be  .termed  absolutely  immaterial  might  be  the  means 
of  great  loss  and  injustice  if  used  on  calico  sold  in  the  South 
Sea  Islands. 

In  Johnston  &  Co.  v.  Orr  Ewing  &  Co.,14  plaintiffs  had  been 
using  a  label,  the  main  feature  of  which  was  a  device  of  two 
elephants.  Defendant  colorably  reproduced  this  label.  The 
plaintiffs'  mark  was  the  only  mark  using  the  figure  of  ele- 
phants known  in  the  Oriental  market,  where  plaintiffs  sold 
their  goods;  and  it  became  known  as  the  "two  elephants." 

"Popham   v.   Cole,  66  N.   Y.   69-  v.  HinJc,  63  Cal.  445-1883;  49  Am. 

1876;  23  Am.  Rep.  22,  and  cases  there  Rep.     96;     Orr    Ewing    &     Co.     v. 

cited;  Morgan's  Sons  Co.  v.  Troxell,  Johnston  &   Co.,  L.  R.  13   Ch.  Div. 

23  Hun,  632-1881 ;  reversed  in  S9  N.  434-1880;        Apollinaris       Co.       v. 

Y.  292-1882;  42  Am.  Rep.  294;  Bead  Scherer,  27  Fed.  18-1886   (C.  C.  S. 

Bros.  v.  Bichardson,  45  L.  T.  N.  S.  D.  N.  Y.). 

54-1881 ;  Beard  v.  Turner,  13  L.  T.  N.  "McLean    v.    Fleming,    96    V.    S. 

S.  747-1866;  LeideTsdorf  v.  Flint,  50  245-1S77,  at  p.  251  ;  24  L.  ed.  828. 
Wis.  400-1880;  7  N.  W.  252;  Eggers  UL.  R.  7  App.  Cas.  219-25-1882. 


76  Unfair  Business  Competition. 

The  main  resemblance  between  the  two  labels  was  the  fact 
that  on  each  was  the  figure 'of  two  elephants.  Held,  the  label 
of  the  defendant  might  easily  mislead  the  natives.  Said  the 
court :  "  To  such  persons,  or  at  least  to  many  of  them  even  if 
they  took  notice  of  the  differences  between  the  two  labels,  it 
might  probably  appear  that  these  were  only  differences  of 
ornamentation,  posture,  and  other  accessories,  leaving  the  dis- 
tinctive and  characteristic  symbol  substantially  unchanged. " 
No  actual  deceit  was  proved.  "  But  in  this  case,  the  plain- 
tiffs judged  it  necessary  to  proceed  without  waiting  till  actual 
deceit  was  proved,  and  I  think  they  judged  rightly,  for  as 
James,  L.  J.,  said  (13  Ch.  Div.  464)  '  the  very  life  of  a  trade- 
mark depends  upon  the  promptitude  with  which  it  is  vindi- 
cated '  "  (id.  p.  229-30). 

"A  consumer  who  has  been  accustomed  to  purchase  an  arti- 
cle in  a  dress  or  package  which  has  been  familiar  to  him  does 
not  stop  to  read  and  examine.  Many  of  the  consumers  of  beer 
are  unable  to  read,  and  many  are  foreigners  and  unacquainted 
with  the  English  language.  All  consumers,  whether  able  to 
read  or  not,  are  in  fact  guided  by  the  general  appearance  of 
the  packages  or  label  which  is  before  them."  15 

Plaintiffs  manufactured  French  polish  in  London,  and  de- 
veloped a  large  trade  in  Bombay,  where  the  goods,  from  the 
two  red  medals  on  the  label,  came  to  be  known  as  "  Lai 
Mohur"  or  "Lai  Chap"  (meaning  "red  medal  or  stamp"). 
Defendants  then  began  to  sell  their  polish  in  Bombay,  with 
labels  differing  from  plaintiffs';  except  that  they  bore  two  red 
medals,  in  much  the  same  position  as  plaintiffs'.  Held,  on  the 
evidence,  that  though  defendants'  label  might  not  deceive  the 
British  public,  it  tended  to  deceive  the  Bombay  public.  In- 
junction was  granted. 

The  inexpensiveness  of  the  article,  and  the  fact  that  it  is 
often  called  for  by  careless  and  illiterate  persons,  or  foreign- 
ers, unfamiliar  with  English,  will  be  taken  into  account.  The 
bearing  of  such  facts  is  aptly  expressed  by  Barrett,  J.,  in 
Morgan's  Sons  Co.  v.  Troxell,16  as  follows:  "  While  there 

15 Kostering  v.  Seattle  Brewing   &       son  v.   Griffith  Bros.   &   Co.,  8   Rep. 
Malting  Co.,  116  Fed.  620-1902    (C.      Pat.  Cas.  370. 
C.   A.   9th   Cir.).      So   also    Wilkin-  1623  Hun   (X.  Y.)    632-36-1881. 


What  is  Similarity?  77 

is  an  almost  ostentatious  display  of  variation  in  matters  not 
likely  to  attract  the  attention  of  the  casual  purchaser,  there  is  a 
substantial  similarity  in  the  picture  to  which  the  eye  has  be- 
come accustomed.  In  this  connection,  we  must  not  lose  sight 
of  the  character  of  the  article,  the  use  to  which  it  is  put,  the 
kind  of  people  who  ask  for  it,  and  the  manner  in  which  it  is 
ordered.  Very  broad  scene  painting  will  deceive  an  ig- 
norant, thoughtless,  or  credulous  domestic,  looking  for  an  arti- 
cle in  common  and  daily  use,  and  of  no  particular  interest  to 
her  personally.  The  same  kind  of  deception  would  be  instantly 
detected  by  an  intelligent  woman  of  the  world,  looking  for  her 
favorite  perfume,  soap,  or  dentifrice,  or  by  a  man  of  luxurious 
tastes,  inquiring  for  some  special  brand  of  champagne." 

§  41.  Comparison  is  Not  the  Test  of  Similarity. —  The  aver- 
age purchaser  has  no  chance  to  compare.  The  only  instances 
of  attempted  simulation,  which  attract  his  notice,  are  those 
in  which  the  differences  are  so  glaring  and  evident  that  deceit 
would  be  very  unlikely.  It  is  this  very  tendency  to  careless- 
ness on  the  part  of  buyers  that  makes  unfair  competition  profit- 
able and  possible  commercially.  In  Stuart  v.  F.  G.  Steivart 
Co.,17  appellant  began  in  1891  to  make  and  sell  "  Stuart's 
Dyspepsia  Tablets  "  and  advertised  them  widely.  Appellee 
knew  of  complainant  and  his  business  when,  in  1895,  he  put 
on  the  market  "  Dr.  Stewart's  Dyspepsia  Tablets  "  in  boxes 
similar  to  appellants'.  Held,  "  Comparison  is  not  the  test  of 
infringement.  The  purchaser  has  not  the  advantage  of  com- 
parison. A  specific  article  comes  to  be  known  by  certain  catch- 
words easily  retained  in  memory,  or  by  a  certain  picture  which 
the  eye  readily  recognizes.  The  purchaser  *  *  *  is  not 
bound  to  study  or  reflect.  He  acts  upon  the  moment  —  he  is 
without  the  opportunity  of  comparison.  It  is  only  when  the 
difference  is  so  gross  that  no  sensible  man  acting  on  the  instant 
would  be  deceived  that  it  can  be  said  that  the  purchaser  ought 
not  to  be  protected  from  imposition.  Indeed,  some  cases  have 
gone  to  the  length  of  declaring  that  the  purchaser  has  a  right  to 
be  careless.  *  *  *  However,  the  imitation  need  only  be  slight, 
if  it  is  attached  to  what  is  most  salient.  Here  the  purchaser, 
desiring  the  remedy  of  the  appellant,  to  which  his  attention 

"91  Fed.  243-45-1899   (C.  C.  A.    7th  Cir.). 


78  Unfair  Business  Competition. 

had  been  attracted  by  the  advertisement,  or  which  possibly  he 
had  before  purchased,  knew  the  remedy  as  '  Stuart's  Dypepsia 
Tablets,'  and  that  it  was  in  a  blue  wrapper.  The  name  caught 
the  ear ;  the  color  caught  the  eye.  *  *  *  We  think  it  would 
require  more  than  the  care  ordinarily  used  *  *  *  to  expect 
that  *  *  *  a  purchaser  would  deliberate  over,  or  be  warned 
by  the  addition  of  the  prefix  '  Dr. '  "     (id.  p.  245-46) ,18 

§  42.  Imitation  of  Salient  Features. —  Imitations  may  be 
slight  and  still  constitute  "  similarity,"  if  they  attach  to 
salient  features.  Many  articles  come  to  be  known  by  a  pe- 
culiarity they  possess,  which  is  usually  described  by  a  catch- 
word. The  important  question  is,  What  part  of  the  label  or 
name  will  the  buyer  look  at?  What  will  he  see?  It  is  a 
physical  fact  that  the  average  person  will  not,  cannot,  take  in 
at  a  casual  glance  all,  or  even  a  large  part,  of  the  detail  of 
what  he  looks  at.19  The  question  is  what  part  of  the  names  or 
marks,  which  are  charged  with  similarity,  does  the  average 
ordinary  buyer  see  when  he  looks  at  them;  what  feature  of  a 
label  or  container  becomes  familiar  to  the  average  buyer  of 
the  article.  We  do  not  hear  all  that  is  spoken  in  our  hearing, 
only  a  part  is  noticed  by  us,  with  sufficient  detail  for  us  to  re- 
tain an  impression  of  it  which  we  will  recall  when  we  hear  it 
again.  Few  people  would  be  struck  with  the  difference  be- 
tween the  name  "  Stuart's  Dyspepsia  Tablets  "  and  "  Dr. 
'Stewart's  Dyspepsia  Tablets,"  and  yet  one  word  in  four  is 
different  in  these  names. 

19  Meyer  v. Dr.  Bull  Vegetable  Medi-  no   chance  for   accurate   comparison. 

cine  Co.,  58  Fed.  884-1893  (C.  C.  A.  No  rule  of  measure  of  fraud,  of  de- 

7th    Cir.).      Plaintiffs    sold    "Bull's  ceit,   or   likelihood  of   confusion   be- 

Cough     Syrup,"     and     "  Dr.     Bull's  tween    plaintiff    and    defendant    has 

Cough   Syrup."     Defendant  sold  hi  been   discovered  in   the  books  which 

similar  wrappers,  "  Dr.  B.  L.  Bull's  will  fit  all  cases,  and  it  is  well  that 

Celebrated     Cough     Syrup."       This  this  is  so,  for  were  there  such  rules 

was       enjoined.         "  Bull's       Cough  to  be  found,  equity  would  sometimes 

Syrup "    is,     in     one     sense,     quite  be   found  to  have  so  bound  herself 

different    from    "  Dr.    B.    L.    Bull's  by  this  same  rule  as  to  be  unable  to 

Celebrated    Cough    Syrup,"   but    the  render  aid  in  some  future  case  of  real 

use   of   the  latter  was   enjoined   not  injustice. 

because  of  the  likeness  between  them,  "Blackwell     v.    Crabb,    36    L.    J. 

but  to  protect  the  purchaser,  who  has  Ch.  N.  S.  504-1867. 


What  is  Similarity?  7D 

The  average  buyer  seeks  a  sign,  some  special  earmark  of  the 
brand  he  has  in  mind.  It  may  be  color  —  or  a  design  —  or  a 
peculiar  shape  or  name.  Once  his  eye  sees  that  or  his  ear 
hears  it,  he  is  satisfied.  He  is  careless  —  yes,  possibly,  but  if 
that  is  the  way  the  average  man  buys  that  sort  of  goods,  he 
may  rightfully  demand  that  the  law  protect  him  from  deceit 
when  he  so  purchases.  There  have  been  cases  which  have  held 
that  a  buyer  has  a  right  to  be  careless,  but  this  is  not  the 
general  rule.     See  §  155. 

§  43.  Necessary  Physical  Requirements  of  the  Article  Must 
be  Considered. —  Sometimes  several  articles  differing  in 
many  ways  are  made  by  various  manufacturers  in  the  attempt 
to  serve  a  specific  purpose,  the  physical  limitations  of  which 
compel  all  the  makers  to  construct  their  goods  in  certain  re- 
spects in  a  very  similar  manner.  In  the  absence  of  patent 
rights,  no  one  can  monopolize  the  mechanical  elements  neces- 
sary to  this  construction  and  no  one  can  appropriate  ex- 
clusively to  himself  a  name  which  is  based  on  a  description 
of  these  common  physical  limitations.  In  other  words,  all 
principles  of  construction  and  names  descriptive  of  them 
which  are  essential  to  a  successful  practical  operation  of  a 
device  and  serves  to  promote  its  efficiency,  may  not  be 
appropriated.20 

The  limitations  of  the  right  of  one  person  to  imitate  an 
article  manufactured  by  another  are  shown  in  Enterprise 
Mfg.  Co.  v.  Landers,  Frary  &  Clark.21  There  the  defendants 
had  not  only  conformed  their  goods  to  complainant's  in  size 
and  general  shape,  but  also  in  all  minor  details  every  line 
and  curve  was  reproduced;  superfluous  metal  was  put  into 
the  driving  wheels,  giving  a  very  characteristically  similar 
effect.  The  goods  were  then  dressed  with  combinations  of 
color  and  decorations  exactly  copied  or  closely  simulated  as 
to  style  of  letters  and  details  of  ornament,  except  that  on 
one  mill  is  found  the  complainant's  name  and  on  the  other 
the  defendant's. 

This  was  held  to  be  "a  most  aggravated  case  of  unfair 
trading,  and  that  such  reproduction  of  unnecessary  lines  and 

10  Marvel    Co.   v.  -Pearl,   133    Fed.  "131  Fed.  240-1904  (C.  C.  A.  2d 

160-1904  (C.  C.  A.  2d  Cir.).  Cir.),  at  p.  161-62. 


80  Unfair  Business  Competition. 

curves  and  simulations  of  arbitrary  designs  and  striking 
combinations  of  color  would  be  restrained  by  a  court  of  equity 
when  they  were  so  close  as  to  show  an  intent  to  appropriate 
the  trade  of  a  competitor."  (Quoted  from  Marvel  v.  Pearl, 
supra.)  See  also  Rushmore  v.  Saxon,  C.  C.  A.  2d  Cir.,  Nov. 
1908. 

§  44.  Distance  Between  Competitors  a  Factor  in  Deciding 
as  to  Similarity. —  It  has  been  stated  that,  in  considering  the 
question  of  unfair  competition,  the  geographical  situation  of 
the  person  who  will  buy  the  goods  in  question  is  to  be  con- 
sidered. This  is  true,  but  not  unqualifiedly  so.  Formerly,  it 
would  have  been  assumed  in  the  absence  of  most  positive 
proof  that  a  party  might  carry  on  his  own  business  under  Ms 
own  name  in  Chicago,  notwithstanding  the  fact  that  parties 
had  established  business  under  the  same  name  in  New  York. 
Ball  v.  Best22  held  that  a  Chicago  house  should  be  enjoined 
because  both  did  a  mail  order  business,  by  reason  of  which  a 
New  York  house  was  confused  with  it  by  buyers  at  points  far 
distant  from  both  Chicago  and  New  York,  and  an  injunction 
was  issued.  In  Randall  v.  British  &  American  Shoe  Co,20  it 
was  held,  that  although  plaintiff's  shop  was  five  miles  from 
defendant's  in  London  there  was  unfair  competition  from 
similarity  of  name. 

The  effect  of  imitation  depends  very  much  upon  propinquity. 
In  many  cases  the  use  of  a  similar  trade-mark,  in  localities 
very  remote  from  each  other,  would  not  justify  an  inference 
that  the  establishments  were  those  of  a  common  proprietor, 

"135  Fed.  434-1905  (C.  C.  N.  D.  bearing  this  name.  Defendants  organ- 
Ill.),  ized    the    "London    American    Shoe 

"19  R.  P.  C.  393-1902.  In  Company"  and,  on  objection  of  the 
1897  plaintiffs  opened  shop  in  plaintiff,  took  the  name  "  The  British 
Regent  street  exclusively  for  the  &  American  Shoe  Company."  Plain- 
sale  of  American  shoes  under  the  tiffs  were  the  first  to  open  shops  that 
name  "American  Shoe  Company."  sold  only  American  shoes.  They 
Plaintiffs,  a  limited  company,  dealt  spent  £5,000  in  advertising  this  busi- 
largely  in  English  shoes.  They  ness.  Defendants'  shop  was  five  miles 
adopted  the  name  "American  Shoe  from  nearest  shop  of  plaintiff. 
Company  "  to  distinguish  that  busi-  Actual  deceit  was  shown.  Held,  that 
ness  from  their  English  business.  both  names  used  by  defendants  were 
They  later  opened  eight  other  shops  calculated  to  deceive. 


What  is  Similarity?  81 

and  so  would  not  result  in  damage  or  support  an  allegation  of 
fraud,  while  if  they  were  near  each  other  such  an  inference 
would  be  legitimate  and  necessary.24 

§  45.  Deceit  of  Ultimate  Purchaser,  Not  of  Middleman,  is 
the  Important  Consideration. —  As  has  been  seen,  it  is  not 
necessary  to  support  an  action  for  unfair  competition  that  the 
vendor  of  goods  should  do  the  deceiving.  It  is  enough  if  he  put 
it  in  the  power  of  anyone  else,  middleman  or  retailer,  to  de- 
ceive the  ultimate  purchaser.  Hence  the  degree  of  identity 
and  imitation  which  must  be  considered  is  not  that  which  would 
deceive  the  jobber  or  immediate  purchaser  but  the  consume* 
of  the  goods.  "  In  the  sharp  contest  between  the  individual 
manufacturer,  who  strives  to  acquire  and  retain  the  fruits 
of  industry  and  honesty,  and  the  field  of  keen  rivals,  seeking 
to  wrest  from  him  the  prize  of  the  public  good-will,  the  in- 
ventive ingenuity  of  the  infringer  has  conceived  a  great  va- 
riety of  devices  for  evading  the  established  rules  of  fair  deal- 
ing. Among  the  later  of  these  devices  are  acts  professedly 
within  legal  limitations,  but  manifestly  designed  to  be  after- 
ward so  made  available  by  other  acts  as  to  deceive  the  public. 
In  such  cases  courts  of  equity,  looking  beyond  the  original 
acts  and  finding  that  their  ultimate  object  and  effect  were 
to  enable  and  induce  the  retail  seller  of  a  fraudulent  imitation 
to  palm  it  off  on  an  unsuspecting  public  for  the  genuine 
article,  and  thus  to  contribute  to  the  infringement  upon  the 
rights  of  the  original  owner,  have  not  hesitated  to  apply  the 
remedy. ' ' 24a 

To  entitle  plaintiff  to  relief  it  is  not  necessary  to  prove 
that  any  customer  of  plaintiff  has  been  deceived  by  anything 
done  by  defendant,  it  being  sufficient  to  show  that  defendant 
knowingly  put  it  in  the  power  of  retail  dealers  to  deceive  their 
customers.25  The  defendant  may  have  sold  the  goods  to  one 
who  has  in  turn  sold  the  goods  to  other  jobbers.  The  question 
is,  Were  the  goods  an  imitation  of  those  of  a  rival,  when  they 
left  defendant's  hands?    Although  all  the  jobbers  knew  whose 

24  Cady  v.   Sehultz,  19  R.  I.  193-  2B  Williamson   Corset   &  Brace  Co. 

1895;  32  Atl.  915;  29  L.  R.  A.  524.      v.  Western  Corset  Co.,  70  Mo.  App. 

"'Hostetter    Co.    v.    Sommers,   84      424-1897. 
Fed.  333-1897  (C.  C.  S.  D.  N.  Y.). 
6 


82  Unfair  Business  Competition. 

make  of  goods  they  were,  yet  if  the  retailer  was  able,  by  rea- 
son of  their  get-up,  to  use  them  fraudulently,  the  maker  may 
be  held  liable  to  one  who  suffers  loss  from  the  retailer's  unfair 
trading.20 

Ambiguity  in  a  name,  or  the  fact  that,  while  similar  to  that 
of  the  plaintiff,  it  is  so  different  that  some  people  construe  it 
one  way  and  some  another,  will  not  prevent  injunction  from 
being  issued  against  it.  It  may  still  be  held  similar  within 
this  rule.  It  is  not  necessarily  important  that  it  has  been 
understood  differently  by  different  persons.  That  does  not 
prove  dissimilarity.27 

§  46.  Similarity  of  Color,  Shape,  Size,  Etc. —  Generally 
speaking,  a  trader  cannot  be  entitled,  even  after  long  and  ex- 
clusive use,  to  monopolize  a  particular  color  or  a  particular 
shape,  size,  or  style  for  the  label  or  wrapper  of  a  particular 
class  of  goods.  The  trend  of  the  law  is  strongly  toward  the 
proposition  that  under  ordinary  circumstances  the  adoption  of 
packages  of  peculiar  form  and  color  alone,  unaccompanied  by 
any  distinguishing  symbol,  sign,  or  seal,  is  not  sufficient  to 
constitute  a  trade-mark.28  This  general  rule  has  been  applied 
in  a  variety  of  ways.  In  Fleischmann  v.  Starkey,20  for  exam- 
ple, it  was  held  that  no  exclusive  right  could  be  acquired  to  use 
a  yellow-colored  label  for  packages  of  yeast.  Nor  can  there 
be  an  exclusive  right  in  the  nature  of  a  trade-mark,  to  the 
use  of  a  barrel  of  peculiar  form  and  dimensions,  irrespective 
of  any  marks  or  devices  stamped  upon  or  connected  with  it.50 
In  Brown  v.  Seidell  defendant  closely  imitated  plaintiffs' 
package  in  the  size,  form,  wrappings  and  color,  but  in  the 
words  and  arrangement  of  the  labels,  the  difference  was 
marked.  Plaintiffs  were  held  (one  judge  dissenting)  not  to 
be  entitled  to  an  injunction.  The  court  quoted  the  language  of 
Heinz  v.  Lute,32  to  the  effect  that  lt  the  offending  label  must 

"New  England  Awl  &  Needle  Co.  29  25  Fed.  127-1  «S85   (C.  C.  R.  L). 

v.   Marlborough  Awl   &   Needle  Co.,  30  Moorman  v.  Hoge,  2  Sawy.   78- 

168  Mass.  154-1897;  46  N.  E.  3cS6.  1871    (C.   C.  Cal.). 

27  Singer  Mfg.  Co.  v.  Loog,  8  L.  R.  3I 153  Pa.  St.  60-72-1893;  25  Atl. 
App.  Cas.  15-18-1882.  1064. 

28  Philadelphia  Novelty  Mfg.  Co.  v.  "  146    Pa.    St.    592-1891 ;    23    Atl. 
Rotiss,  40  Fed.  585-1889    (C.  C.  E.  314. 

D.  N.  Y.). 


What  is  Similarity?  83 

be  such  that  it  is  likely  to  deceive  persons  of  ordinary  intelli- 
gence." And  the  court  doubts  whether  "  the  mere  resem- 
blance, accidental  or  otherwise,  in  the  size  and  stylo  of  putting 
up  packages,  is  of  itself  sufficient  to  justify  the  interference 
of  a  court  of  equity." 

It  does  not  follow,  however,  that  while  the  imitation  of  a 
particular  feature,  such  as  color  or  shape,  would  not,  if  stand- 
ing alone,  be  restrained,  yet,  if  there  is  imitation  in  several 
such  features  producing  misleading  likeness  of  general  ap- 
pearance, an  injunction  will  not  be  issued  expressly  against 
the  use  of  a  particular  feature,  such  as  color,  and  also  gener- 
ally against  the  use  of  all  the  features  in  combination.  In  Ster- 
ling Remedy  Co.  v.  Spermine  Medical  Co.?3  there  was  a  clear 
and  deliberate  imitation  of  the  peculiar  and  unusual  shape  and 
color  of  labels  and  style  of  box  adopted  by  the  complainant,  as 
well  as  of  letter  press  and  of  the  name  applied  to  the  goods. 
Held,  that  there  should  be  an  injunction  against  the  form  of 
tablet  and  shape  of  box  as  well  as  against  the  use  of  infringing 
names.  So  also  in  Franck  v.  Frank  Chicory  Co.,3i  the  use  of 
a  particular  label  was  specifically  prohibited,  where  there  had 
been  imitation  in  other  respects  also.  The  court  in  such  cases 
is  not  bound  to  limit  its  injunction  to  the  combined  use  of 
all  the  features  of  imitation. 

§  47.  Similarity  of  Names. —  The  cases  given  in  the  note 
below  are  rulings  of  various  courts  on  what  are  and  are  not 
similar  names.  The  foregoing  rules  apply  in  general,  but  in 
the  last  analysis,  local  conditions,  the  peculiar  facts  of  each 
case  and  other  evidences  of  fraud  in  addition  to  the  similarity 
of  the  names,  are  all  considered  by  the  court.35      See  §  135. 

83 112   Fed.   1000-1901    (C.    C.   A.  street  with  an  entrance  also  on  the 

7th  Cir.).  Strand.      In    1877    defendant   placed 

M95  Fed.  818-1899    (C.  C.  Wis.),  upon    Ins    shop    a   sign    bearing   the 

M  Civil  Service  Supply  Association  words  "  Civil  Service  Boot  Supply  " 

v.     Dean,    13     Ch.     Div.     512-1879.  and  in  his  window  a  card  with  the 

Plaintiffs  had  a  store  in  Queen  Vic-  words  "  Civil  Service  "  in  large  let- 

toria   street.      In    1877   they    opened  ters.     It  was   admitted   on   the   trial 

a  store  at  Bedford,  a  store  for  boots  that  the  words  "  Civil  Service  "  were 

and  shoes  with  an  entrance  on  Tavi-  used  by  many  other  shops  in  London, 

stock  street.     Defendant  was  a  boot-  The  court  held  that  it  was  not  shown 

maker    having    a    shop    on    Bedford  that  the  shop  of  defendant  had  been 


84 


Unfair  Business  Competition. 


represented  to  any  of  the  witnesses 
as  that  of  the  plaintiffs.  That,  inas- 
much as  the  plaintiffs  had  never  sold 
boots  or  shoes  until  1877,  there  could 
be  no  impropriety  in  defendant  put- 
ting up  the  signs  he  did.  No  per- 
son desiring  to  get  into  the  Tavistock 
street  shop  could  have  been  misled 
when  he  went  into  a  shop  opening 
in  the  Strand.  These  rules  of  trade 
are  made  for  the  general  public  and 
not  for  those  who  are  willing  to  be 
misled  and  to  believe  that  when  they 
are  going  in  one  street  they  are  go- 
ing in  another.  Goodwin  v.  Ivory 
Soap  Co.,  18  R.  P.  C.  389-92-1901; 
not  trade-mark  case.  Goodwin  be- 
gan to  sell  Ivy  soap  in  1889  and  in 
1899  began  action  to  restrain  de- 
fendants from  selling  Ivory  soap  -in 
England.  It  was  admitted  Ivory 
soap  had  been  sold  in  England  prior 
to  1889.  Held,  the  two  soaps  were 
put  up  in  an  entirely  different  man- 
ner, so  no  mistake  could  result.  The 
only  ground  plaintiff  has  for  recov- 
ery is  similarity  of  name  and  the 
consequent  liability  of  resulting  de- 
ception. Held,  on  appeal,  that  "  Sim- 
ply because  the  word  '  Ivy '  may 
have  some  sort  of  similar  sound  to 
the  word  '  Ivory,'  if  you  do  not  pro- 
nounce the  word  '  Ivy '  properly,  the 
plaintiff  asks  the  court  to  assume  as 
the  inevitable  deduction  that  what  the 
defendants  are  doing  must  be  calcu- 
lated to  deceive.  It  is  impossible  to 
my  mind  to  make  any  such  deduc- 
tion from  the  facts."  Cooper  &  Mc- 
Leod  v.  Maclachlan,  19  R.  P.  C.  27- 
1901.  After  1875  plaintiffs  used 
with  their  firm  name  the  words 
*'  Castle  Brewery."  They  were  lo- 
cated in  Edinburgh.  In  1872  de- 
fendants opened  a  brewery  at  Govan, 
which     plant     they    called     "  Castle 


Vaults."  In  1900  they  opened  a 
brewery  near  Edinburgh  which  they 
called  "  Castle  Brewery."  The  de- 
fendant had  had  a  "  Castle  Brewery  " 
at  Glasgow  since  1888  and  had  used 
the  name  "  Castle  Beer."  No  proof 
of  deceit  —  injunction  refused.  Up- 
held on  appeal.  Lee  v.  Haley,  L.  R. 
5  Ch.  App.  Cas.  155-1869.  The 
plaintiffs  had,  for  a  series  of  years, 
carried  on  business  as  coal  dealers 
in  Pall  Mall,  London,  under  the  name 
of  the  "  Guinea  Coal  Company." 
The  defendant,  who  had  been  their 
manager,  finally  set  up  a  business  in 
the  same  street  under  the  same  style 
of  "  The  Pall  Mall  Guinea  Coal  Com- 
pany," and,  while  it  appeared  that 
there  were  other  Guinea  Coal  Com- 
panies in  London  so  that  the  plain- 
tiffs did  not  have  the  exclusive  right 
to  the  use  of  the  trade-mark 
"  Guinea  Coal  Company ;"  yet  the 
court  held  that  they  were  entitled,  as 
against  the  defendant,  to  be  pro- 
tected in  the  use  of  the  name.  "  But 
the  principle  upon  which  the  cases 
on  this  subject  proceed  is,  not  that 
there  is  property  in  the  word,  but 
that  it  is  a  fraud  on  a  person  who 
has  established  a  trade,  and  carries 
it  on  under  a  given  name,  that  some 
other  person  should  assume  the  same 
name,  or  the  same  name  with  a  slight 
alteration,  in  such  a  way  as  to  in- 
duce persons  to  deal  with  him  hi  the 
belief  that  they  are  dealing  with  the 
person  who  has  given  a  reputation  to 
the  same"  (id.  p.  161).  This  case 
goes  further  than  it  is  necessary  to 
carry  the  ride  in  the  foregoing  case, 
because  the  words  "  Pall  Mall  Guinea 
Coal  Company  "  could  be  truthfully 
used  by  both  parties.  Both  sold  the 
coal  in  Pall  Mall  for  a  guinea  a  ton. 
Army  &  Navy  Co-operative  Society 


What  is  Similarity? 


85 


v.  Army,  Navy  &  Civil  Service  Co- 
operative Society  of  South  Africa, 
Ld.,  19  R.  P.  C.  574-76-1902.  Plain- 
tiff had  been  incorporated  for  thirty 
years.  Held,  on  hearing  for  interlocu- 
tory injunction  that  the  name  was  cal- 
culated to  deceive.  "  The  plaintiffs 
have  no  right  to  the  words  'Army  and 
Navy '  or  any  combination  of  those 
words.  Their  right  lies  in  this,  that 
they  may  sue  if  a  defendant  is  fraud- 
ulently adopting  a  name  for  the  pur- 
pose of  pretending  that  his  trade  is 
their  trade,  and  if  he  be  not  fraudu- 
lent at  all,  still  the  plaintiffs  may  sue 
'  in  property,'  if  he  is  adopting  a 
name  the  result  of  which  will  be 
that  the  defendant  will  be  taking  the 
plaintiffs'  property  in  the  sense  that 
persons  will  go  to  the  defendant  to 
trade  with  him  when  they  meant  to 
go  to  the  plaintiffs,  meaning  to  trade 
with  them."  Choynski  v.  Cohen,  39 
Cal.  501-1870.  Plaintiff  had  for 
some  years  conducted  a  bookstore 
called  the  "Antiquarian  Book  Store." 
This  name  was  placed  on  the  sign 
and  uniformly  used  in  advertising 
and  in  all  transactions.  He  now 
sought  to  enjoin  defendant  from  con- 
ducting a  rival  store  under  the  name 
of  the  "Antiquarian  Book  &  Variety 
Store."  Held,  that  plaintiff  could 
claim  no  exclusive  right  to  use  the 
word  "Antiquarian "  as  part  of  his 
trade-mark  or  trade  name,  and  that 
he  was  entitled  to  no  relief.  Wein- 
stock,  Lubin  &  Co.  v.  Marks,  109  Cal. 
529-1895;  42  Pac.  142;  30  L.  R.  A. 
182.  Plaintiffs  in  1874  opened  the 
"  Mechanics'  Store."  Defendant  in 
1887  opened  the  "  Mechanical  Store." 
"As  we  view  the  picture  presented 
by  the  findings  of  fact,  the  question 
as  to  what  may  or  may  not  be  the 
subject  of  a  trade-mark  is  not  the 


problem  to  be  solved.  That  these 
words  are  of  a  kind  that  may  be 
used  as  a  trade  name  we  have  no 
doubt,  and  having  established  that 
fact  we  are  required  to  pursue 
the  investigation  no  further.  That 
certain  names  and  designations  and 
names  which  may  not  become  tech- 
nical or  specific  trade-marks  may  be- 
come the  names  of  articles  or  of 
places  of  business,  and  thereby  the 
use  thereof  receive  the  protection  of 
the  law,  cannot  be  doubted,  for  the 
cases  everywhere  recognize  that  fact  " 
(id.  p.  535-36).  *  *  *  "And  that 
the  words  '  Mechanics'  Store '  may 
be  made  a  trade  name,  and  the  user 
thereof  become  entitled  under  the  law 
to  protection  from  pirates  preying 
upon  the  sea  of  commercial  trade, 
we  have  no  doubt.  We  think  the. 
defendant  should  be  restrained  from 
the  use  of  the  words  '  Mechanical 
Store.'  The  court  has  declared  the 
fact  to  be,  and  it  is  not  challenged 
by  the  defendant,  that  these  words 
were  used  as  a  designation  of  his 
store  for  the  purpose  of  deceiving 
the  public,  and  especially  plaintiff's 
customers,  and  thereby  securing  the 
advantages  and  benefits  of  the  good- 
will of  plaintiff's  business.  To  say 
that  such  conduct  on  the  part  of 
the  defendant  is  unfair  business  com- 
petition is  to  state  the  facts  in  the 
mildest  terms"  (id.  p.  537).  Bo- 
lander  v.  Peterson,  136  111.  215-1891; 
26  N.  E.  603;  11  L.  R.  A.  350. 
Complainant,  a  dealer  in  snuffs  in 
Chicago,  had  for  some  time  desig- 
nated his  store  and  business  as 
"  Svenska  Snusmagasinet  "  ( Swedish 
Snuff  Store) ;  his  store  was  adver- 
tised and  well-known  among  Swedes 
by  that  name.  Defendant  was  also 
a  dealer  in  snuffs  on  the  same  street, 


86 


Unfair  Business  Competition. 


not  far  from  complainant,  and  had 
been  using  the  sign  "  C.  W.  Peterson, 
Nya  Snus  Fabrik."  He  now  altered 
this  to  "  C.  W.  Peterson,  Svenska 
Snus  Magasin,"  and  advertised  the 
store  and  business  as  "  Fran  Snus- 
rnagasinet."  The  snuffs  were  sold 
under  different  brands.  Held,  that 
complainant  was  not  entitled  to  re- 
strain him  from  so  doing.  Mossier 
v.  Jacobs,  66  111.  App.  571-1896. 
■Complainants  alleged  that  they  had 
been  engaged  in  business  for  fifteen 
years  under  the  style  of  "  Six  Little 
Tailors,"  and  that  the  defendant  had 
opened  a  tailoring  establishment  un- 
der the  name  of  "  Six  Big  Tailors." 
Held,  that  the  name  was  so  similar  to 
■complainant's  trade  name  that  it  was 
calculated  to  deceive  the  unwary,  and 
■  that  its  use  would  be  enjoined.  In- 
surance Oil  Tank  Co.  v.  Scott,  33 
La.  Ann.  946-1881.  Plaintiff  had 
an  illuminating  oil  specially  manu- 
factured for  it  and  described  it  as 
u  Insurance  Oil,"  claiming  it  excelled 
in  its  combination  of  safety  with 
other  qualities.  Defendants  after- 
ward put  on  the  market  oil  in  pack- 
ages branded  "  Insurance  Oil "  in 
type  exactly  like  that  used  by  plain- 
tiff. Held,  that  plaintiff  was  entitled 
to  the  exclusive  use  of  the  words 
""  Insurance  Oil."  Giragosian  v. 
•Chutjian,  194  Mass.  504-1907;  80 
IT.  E.  647.  Plaintiff  in  1900  began 
^business  under  the  trade  name  "  Ori- 
ental Process  Rug  Renovating  Com- 
pany." About  the  same  time,  and 
before  this  name  had  become  identi- 
fied with  plaintiff  in  public  reputa- 
tion, defendant  in  good  faith  went 
Into  business  under  the  name  "  Ori- 
ental Rug  &  Carpet  Renovating 
Works."  In  advertising  he  generally 
prefixed  the  name  "  Chutjian  Broth- 


ers "  to  these  words.  Neither  party 
used  any  process  peculiar  to  him- 
self. Held,  that  the  defendant  was 
entitled  to  use  the  trade  name  adopted 
by  him  with  or  without  the  proper 
name  prefixed  in  spite  of  its  resem- 
blance to  plaintiff's.  But  he  should 
not  alter  the  name  to  "  Oriental  Car- 
pet and  Rug  Renovating  Works  "  so 
as  to  appear  first  in  the  telephone 
directory.  Samuels  v.  Spitzer,  177 
Mass.  226-1900;  58  N.  E.  693.  A  bill 
in  equity  alleged  that  plaintiff  had 
developed  by  advertisement  and 
otherwise  a  large  business  as  a 
clothier  in  Rnode  Island  and  south- 
eastern Massachusetts  under  the 
name  of  the  rt  Manufacturers'  Outlet 
Company,"  Mid  that  the  name  had 
been  copyrighted  or  registered  as 
a  trade-mark.  It  further  alleged  that 
defendant,  fraudulently  seeking  to 
mislead  the  public  to  his  own  advan- 
tage, had  established  in  a  neighbor- 
hood from  which  a  considerable  part 
of  plaintiff's  trade  was  drawn  a  shop 
for  the  sale  of  goods  similar  to  plain- 
tiff's under  the  name  "  Taunton  Out- 
let Company,"  and  was  thereby  de- 
ceiving the  public  and  diverting  trade 
from  plaintiff.  On  demurrer  the  bill 
was  held  to  state  a  cause  of  action 
for  unfair  competition.  Miskell  v. 
Prokop,  58  Nebr.  628-1899;  79  N. 
W.  522.  Plaintiff  had  for  some  years 
kept  a  store  bearing  the  sign  "  Racket 
Store,"  and  generally  known  by  that 
name.  Defendant  then  opened  a 
store  in  the  immediate  neighborhood 
under  the  sign  and  name  "  New  York 
Racket  Store,"  the  words  "  New 
York "  being  printed  in  small  let- 
ters. It  appeared  that  the  word 
"  Racket  "  had  been  quite  often  used 
as  descriptive  of  certain  kinds  of 
stores  before  plaintiff's  adoption  of 


What  is  Similarity? 


87 


the  term.  The  court  below  having 
determined  that  there  was,  under  the 
circumstances,  no  such  simulation  as 
amounted  to  unfair  competition,  held, 
that  its  finding  would  not  be  dis- 
turbed on  appeal.  Brooklyn  White 
Lead  Co.  v.  Masury,  25  Barb.  (N. 
Y.)  416-1857.  Plaintiffs  had  for 
more  than  twenty  years  manu- 
factured white  lead  at  Brooklyn, 
stamping  the  kegs  with  their  corpo- 
rate name.  Defendant  subsequently 
began  to  manufacture  white  lead  at 
Brooklyn,  and  at  first  marked  his 
kegs  "  Brooklyn  White  Lead."  Later 
he  began  to  make  zinc  paint  also, 
and  changed  the  mark  on  his  goods 
to  "  Brooklyn  White  Lead  &  Zinc 
Company."  Held,  that  he  should  be 
required  to  omit  the  word  "  Com- 
pany "  from  his  mark.  United  States 
Frame  &  Picture  Co.  v.  Horowitz,  51 
Misc.  (N.  Y.)  101-1906;  100  N.  Y. 
Supp.  705.  Plaintiff,  the  "United 
States  Frame  &  Picture  Company," 
was  a  corporation  engaged  for  some 
years  in  business  at  No.  3  Barclay 
street.  Defendant  was  the  brother 
of  its  president,  and  had  himself 
been  an  employee  and  officer  of  the 
company  until  1905,  when  he  left  it 
and  engaged  independently  in  the 
same  line  of  business  at  86  Fulton 
street  under  the  trade  name  of  "  New 
York  Frame  &  Picture  Company." 
It  was  held  that  defendant  was  enti- 
tled to  use  this  name,  but  he  was 
enjoined  from  using,  for  advertising, 
stationery  closely  resembling  plain- 
tiff's, and  from  publication  of  no- 
tices of  removal  so  worded  as  to  lead 
the  unwary  to  suppose  that  the  plain- 
tiff was  referred  to.  Stirling  Silk 
Mfg.  Co.  v.  Sterling  Silk  Co.,  59  N. 
J.  Eq.  394-96-1900;  46  Atl.  199. 
"The  name  of   'The   Sterling   Silk 


Company '  is  so  similar  to  that  of 
*  *  *  'The  Stirling  Silk  Manufac- 
turing Company '  that  there  is  dan- 
ger of  confusing  complainant's  goods 
with  defendants "  by  retail  pur- 
chasers. Commonwealth  v.  Banks, 
198  Pa.  St.  397-1901;  48  Atl.  277. 
This  was  a  bill  in  equity  by  the  at- 
torney-general to  enjoin  the  defend- 
ant, the  proprietor  of  a  purely  com- 
mercial or  business  school,  from  us- 
ing the  name  "  University  of  Phila- 
delphia," principally  upon  the  ground 
that  the  use  of  the  word  "  Univer- 
sity "  was  misleading  and  unauthor- 
ized. It  was  also  urged  that  the 
similarity  of  the  name  to  that  of  the 
University  of  Pennsylvania  led  to 
confusion  and  mistakes,  and  the 
court,  in  granting  the  injunction,  say 
that  therefore  the  University  of 
Pennsylvania,  and  persons  dealing 
with  it,  would  be  entitled  "  to  pro- 
tection under  the  law  relating  to 
trade-marks,  against  the  use  of  a 
name  which  is  similar  in  point  of 
territorial  designation  and  misleads 
the  public"  (at  p.  401).  Western 
Grocer    Co.    v.    Caffarelli,  Tex. 

;  108  S.  W.  413-1908.  Plaintiff 
and  its  predecessors,  wholesale 
grocers  at  San  Antonio,  had  for 
some  years  used  the  words  "  Georgia 
Coon,"  as  a  trade-mark  for  their 
molasses  and  syrups,  which  came  to 
be  known  and  were  popularly  desig- 
nated simply  as  "  Coon  Molasses." 
Held,  that  defendants  were  not  enti- 
tled to  sell  their  molasses  under  the 
title  "  New  Coon."  Germer  Stove 
Co.  v.  Art  Stove  Co.,  150  Fed.  141- 
1907  (C.  C.  A.  6th  Cir.).  Com- 
plainants made  and  sold  stoves 
called  "  Radiant  Home  Stoves,"  and 
advertised  them  extensively  as  con- 
taining the  "  XX  Century  Fire-Pot," 


88 


Unfair  Business  Competition. 


by  which  name  a  patented  fire-pot, 
used  also  by  other  manufacturers, 
had  come  to  be  known.  Defendant 
made  and  sold,  under  the  name 
"  Twentieth  Century  Laurel,"  a  stove 
containing  a  somewhat  similar  fire- 
pot,  but  the  stove  was  plainly 
marked  with  defendant's  name.  Held 
not  to  be  unfair  competition.  Wor- 
cester Brewing  Co.  v.  Rueter  &  Co., 
157  Fed.  217-1907  (C.  C.  A.  1st 
Cir.).  "Sterling  Ale"  was  held  to 
be  not  purely  descriptive,  but  to  be 
entitled  to  protection  against  a  cor- 
poration formed  by  one  who  had 
been  in  the  employ  of  the  original 
manufacturer,  which  put  on  the 
market  "  Worcester  Sterling  Ale " 
without  clearly  pointing  out  to  the 
public  the  difference  in  origin. 
Brown  Chemical  Co.  v.  Frederick 
Stearns  &  Co.,  37  Fed.  360-1889 
(C.  C.  E.  D.  Mich.).  Plaintiff 
manufactured  "  Brown's  Iron  Bit- 
ters,"  while   defendant,   a   Michigan 


corporation,  manufactured  a  similar 
preparation  called  "  Iron  Tonic  Bit- 
ters." There  was  a  sufficient  dif- 
ferentiation in  packages  and  labels, 
but  in  certain  cases,  at  the  request  of 
particular  dealers,  defendant  printed 
at  the  foot  of  the  label  "  Brown  & 
Co.,  New  York  City,"  in  place  of  de- 
fendant's name.  There  was  evidence 
that  at  least  one  dealer  had  attempted 
to  palm  off  defendant's  package  as 
plaintiff's.  Held,  that  plaintiff  was 
entitled  to  an  injunction  against  this 
practice  without  regard  to  the 
honesty  of  defendant's  intentions. 
Dr.  Peter  H.  Fahrney  &  Sons  Co.  v. 
Ruminer,  153  Fed.  735-1907  (C.  C. 
A.  7th  Cir.).  Complainant  had  long 
advertised  and  sold  a  patent  medi- 
cine under  the  name  "Alpenkrauter." 
Held,  that  defendant's  advertisement 
of  a  similar  medicine  as  "  St.  Ber- 
nard Alpen  Krauter"  constituted 
unfair  competition. 


CHAPTER  IV. 

Good-Will. 

Section  48.  Definitions  of  good-will. 

49.  Good-will  protected  by  law  of  Unfair  Competition. 

Good-will  is  unquestionably  property.  In  England  it  is  so 
treated  with  reference  to  the  stamp  duty  on  instruments  deal- 
ing with  good- will.1    And  American  courts  have  held  the  same.2 

Probably  Lord  Hardwicke  was  the  first  to  recognize  good- 
will as  a  valuable  property  when  he  said:  "  Suppose  the 
house  were  a  house  of  great  trade,  he  must  account  for  the 
value  of  what  is  called  the  good- will  of  it."2a 

§  48.  Definitions  of  Good-Will. —  Lord  Eldon  said  good- 
will was  a  "  probability."  Vice-Chancellor  Wood  called  it 
an  "  advantage."  The  Michigan  court  terms  it  "  favor." 
Judge  Story,  an  "  advantage  or  benefit."  Certainly,  one  of 
the  principal  ingredients  of  good-will  is  the  name  of  the  busi- 
ness house  using  it.  Injure  the  name,  and  its  good-will  at 
once  loses  in  value.  Destroy  its  reputation  —  its  name  for 
honor,  for  promptness,  for  always  dealing  in  high  grade  goods, 
and  the  good-will  is  impaired.  Lord  Eldon  said  good-will  is 
"  nothing  more  than  the  probability  that  the  old  customers 
will  resort  to  the  old  place."3  He  might  with  equal  fitness 
have  added  that  it  is  the  further  probability  that  old  customers 
will  remember  favorably  the  name  of  the  house  with  which 
they  have  dealt  so  long. 

Sir  John  Leach  in  Chissum  v.  Deives,4  defines  good-will  to  be 
"  the  advantage  attached  to  the  possession  of  the  house." 

"  Good-will,"  said  Lord  Langdale,  "  is  the  chance  or  prob- 

*See     Commissioners     of     Inland  lor,    90    Ala.    241-18S9;    8    So.    36; 

Bevenue  v.  Angus  &   Co.,  23  Q.  B.  Bank  of  Tomah  v.  Warren,  94  Wis. 

Div.    579-1889;    Brooke    &    Co.    v.  151-1896;  68  N.  W.  549. 

Commissioners    of    Inland    Bevenue,  2a  Gibblett  v.   Bead,   9   Mod.   459- 

2  Q.  B.  356-1896.  1743. 

1  Metropolitan    Nat.    Bank    v.    St.  *  Cruttwell  v.  Lye,  17  Ves.  335-46- 

Louis   Dispatch    Co.,    36   Fed.    722-  1810. 

1888   (C.  C.  Mo.)-,  Howard  v.  Tay-  45  Russ.  29. 

[89] 


90  Unfair  Business  Competition. 

ability  that  custom  will  be  at  a  certain  place  in  consequence  of 
the  way  in  which  that  business  has  been  previously  carried 
on."5 

Various  kinds  of  good-will  grow  up  in  connection  with 
various  sorts  of  business :  one  sort  is  that  belonging  to  a  pub- 
lic house,  a  theatre,  an  office  building,  an  amusement  park,  a 
manufacturing  works,  as  the  "  Crown  Works,"  (see  Rickerby 
v.  Reay,  infra)  and  is  usually  termed  local  good-will  or  busi- 
ness good-will.  Contrasted  with  this,  is  personal  or,  as  it  is 
often  called,  professional  good-will.  This  attaches  more 
directly  to  a  person,  and  is  not  associated,  in  the  minds  of 
the  public  or  business  world,  with  any  particular  spot.  "  It 
is  quite  plain  that  the  good- will  of  a  public-house  passes  with 
the  public-house.  In  such  a  case,  the  good  will  is  the  mere 
habit  of  the  customers  resorting  to  the  house.  It  is  not  what 
is  called  personal  good-will."6 

Then,  too,  there  is  a  good-will  which  attaches  solely  to  goods, 
in  distinction  from  that  belonging  to  a  person  or  a  place  or 
business  house.  For  instance,  few  people  know  the  name  of 
the  makers,  or  the  place  of  manufacture  of  "  Castoria," 
while  most  persons  have  heard  of  the  medicine  itself.  The 
"  Gold  Dust  Twins,"  (the  name  of  a  brand  of  cleaning  powder) 
is  well-known,  but  few  could  say  who  made  it.  So  numerous 
are  the  assumed  names  used  in  business,  that  statutes  are 
passed  in  various  states  requiring  their  registration  in  public 
offices  and  many  of  these  are  attached  to  goods  rather  than  to 
people  or  places. 

Included  in  good  will  is  the  right  to  use  lists  of  customers. 
The  sale  of  good-will  passes  to  the  purchaser  such  a  list  of 
customers  and  correspondents  of  the  house.  As  mere  posses- 
sion of  this  list,  acquired  legally,  gives  to  the  possessor  the 
right  to  solicit  the  trade  of  such  customers,  actions  regard- 
ing this  sort  of  good-will  often  take  the  form  of  applications 
to  enjoin  one  having  such  a  list  from  using  it  to  the  damage 
of  the  owner  of  the  good-will. 

Good-will  of  professional  men  and  in  professional  partner- 

8  England  v.  Downs,  6  Beav.  269-  8  Ex  p.  Punnett,  16  Ch.  Div.  226- 

1842.  33-1880. 


Good- Will.  91 

ships  attaches  to  person,  not  to  place ;  and  this  is  true  of  part- 
nerships made  by  brokers  and  builders,  and  partnerships  for 
buying  and  selling  cattle  and  other  goods,  where  the  partners 
go  about  from  place  to  place.  In  such  instances  credit  attaches 
to  persons.  It  is  "  in  part  the  chance  that  sellers  will  con- 
sign in  a  name  they  know."7  As  showing  what  professional 
good-will  is  and  how  it  is  appendant  to  the  person  of  a 
doctor,  the  case  of  May  v.  Thompson,8  which  arose  on  a  breach 
of  contract  to  buy  a  practice,  is  in  point.  Jessel,  M.  R.,  said 
in  that  case  (p.  718)  that  in  a  contract  for  the  sale  of  a  doctor's 
practice,  "  there  is  always  a  stipulation  that  the  selling  doctor 
shall  retire  from  practice  either  altogether  or  within  a  given 
distance.  It  is  so  always  and  there  is  also,  sometimes,  a  stipu- 
lation that  he  shall  not  solicit  the  patients  or  shall  not  solicit 
them  for  a  given  time. ' ' 

One  of  the  earliest  cases  on  good-will  was  Crutwell  v.  Lye,9 
decided  in  1810,  in  which  Lord  Eldon  seemed  to  think  that, 
without  actual  fraud,  no  injunction  should  issue  to  protect 
good-will  of  a  concern  which  had  been  sold,  from  possible  in- 
jury from  further  competition  on  the  part  of  the  vendor; 
saying  that  "  the  good-will  which  has  been  the  subject  of  sale, 
is  nothing  more  than  the  probability  that  the  old  customers 
will  resort  to  the  old  place."  Jessel,  M.  R.,  in  Ginesi  v.  Cooper 
&  Co.,10  questions  this  rule  of  Lord  Eldon  and  states  what  has 
since  come  to  be  the  law  on  this  point,  thus:  "  '  Good-will,'  I 
apprehend,  must  mean  every  advantage  —  every  possible  ad- 
vantage, if  I  may  so  express  it,  as  contrasted  with  the  negative 
advantage  of  the  late  partner,  not  carrying  on  the  business 
himself  —  that  has  been  acquired  by  the  old  firm  in  carrying 
on  its  business,  whether  connected  with  the  premises  in  which 
the  business  was  previously  carried  on,  or  with  the  name  of 
the  late  firm,  or  with  any  other  matter  carrying  with  it  the 
benefit  of  the  business."  The  above  definition  of  Lord  Eldon 
was  given  when  he  was  considering  a  case  of  a  wagoner  who 
carried  goods  on  a  route,  and  the  value  of  his  good-will  was 
solely  in  the  fact  that  people  in  the  locality  knew  a  wagoner 

T  Bates  Partnership,  vol.  II,  §  657.  *  17  Ves.  335-46. 

9  20  Ch.  Div.  718.  10 14  Ch.  Div.  596-600-1880. 


92  Unfair  Business  Competition. 

was  accustomed  to  start  at  the  place  where  he  usually  did 
start  and  would  go  there  when  needing  a  wagoner.  Wood, 
V.  C,  in  Churton  v.  Douglas,11  defines  good-will  thus:  "  Good- 
will, I  apprehend,  must  mean  every  advantage  that  has  been 
acquired  by  the  old  firm  by  carrying  on  its  business,  every- 
thing connected  with  the  premises,  and  the  name  of  the  firm, 
and  everything  connected  with  or  carrying  with  it  the  benefit 
of  the  business."  12 

Judge  Story  defines  good-will  as  "  the  advantage  or  benefit, 
which  is  acquired  by  an  establishment,  beyond  the  mere  value 
of  the  capital  stock,  funds,  or  property  employed  therein,  in 
consequence  of  the  general  public  patronage  and  encourage- 
ment which  it  receives  from  constant  or  habitual  customers, 
on  account  of  its  local  position,  or  common  celebrity,  or  repu- 
tation for  skill  or  affluence,  or  punctuality,  or  from  other  acci- 
dental circumstances,  or  necessities,  or  even  from  ancient  par- 
tialities, or  prejudices."  13 

The  Michigan  definition  is  as  follows:  "  The  favor  which 
the  management  of  a  business  has  won  from  the  public,  and 
the  probability  that  old  customers  will  continue  to  give  it 
their  patronage."14 

§  49.  Good- Will  Protected  by  Law  of  Unfair  Competition. 
—  Good-will  is  protected  by  the  law  of  Unfair  Competition. 
One  can  pass  off  such  good-will  as  he  possesses,  as  the  good- 
will of  another,  just  as  he  can  pass  off  his  goods  as  those  of 
another ;  for  when  a  trader,  whose  goods  have  little  reputation, 
holds  himself  out  to  be  someone  else,  whose  goods  have  a 
favorable  reputation,  he  fraudulently  obtains  the  benefit  of  a 
valuable  good-will  not  his  own.  Hence  he  does  not  pass  off  his 
goods  as  another's  necessarily,  but  he  holds  himself  out  as 
possessing  a  reputation  that  gives  his  house  and  its  goods 
particular  standing  in  the  mind  of  the  trade  and  the  public, 
which  standing  belongs  only  to  another.  It  has  been  rightly 
termed  stealing  for  one  to  thus  take  fraudulent  advantage  of 
another's  good-will. 

11  28  L.  J.  N.  S.  Ch.  841-45-1859.  "  2  Story  Partnership,  §  99. 

"  See  also  Menendez  v.  Holt,  128  u  Chittenden  v.  Witbeek,  50  Mich. 

U.   S.  514-22-1888;  32  L.  ed.  526;  401-20-1883;  15  N.  W.  526. 
9  Sup.  Ct.  143. 


Good- Will. 


93 


Colorable  purchases  of  a  business  of  small  value  to  obtain 
its  good-will,  for  the  purpose  of  using  the  name,  because  of 
its  similarity  to  that  of  a  successful  competitor,  have  been 
frequently  condemned  by  the  courts.  Such  transactions  are 
deemed  fraudulent  and  the  use  of  the  name  in  question  will 
be  enjoined.  See  also  as  to  this,  the  section  of  the  chapter  on 
"  Family  Name  "  as  to  "  Surnames  acquired  otherwise  than 
by  Descent  "  (§  74). 15 


15  Abel  Morrall  Ld.  v.  Hessin  &  Co., 
20  R.  P.  C.  429-1903  (Ct.  App.). 
For  one  hundred  years  a  needle  busi- 
ness had  existed  under  the  name  of 
"Abel  Morrall."  In  1891  plaintiff 
purchased  the  good-will  of  the  needle 
business  of  Joseph  Mogg,  and 
Joseph  John  Richard  Mogg,  which 
dated  from  1846.  Abel  Morrall's  or 
A.  Morrall's  needles  were  famous  un- 
der these  names  or  simply  as  Mor- 
rall's. Mogg's  needles  were  well 
known  in  certain  localities.  Defend- 
ant began  needle  business  in  1893  as 
"  T.  Hassin  &  Co.,"  and  in  1900  pur- 
chased business  of  Jabez  Yardley 
Morrall,  a  former  employee  of  a  com- 
pany now  owned  by  plaintiff.  He 
was  not  successful.  Defendant  pur- 
chased his  business  for  £68.  W. 
Mogg  &  Co.  were  provision  dealers 
and  for  £7  sold  to  defendant  "  the 
whole  bag  of  tricks,"  the  receipt 
given  by  defendant  mentioning  good- 
will, use  of  name,  labels,  etc.  Held, 
these  purchases  were  colorable  and 
made  with  intent  to  defraud  plaintiff, 
and  that  the  defendant  might  obtain 
trade  intended  for  plaintiff.  That 
this  was  fraud  enough  to  enable  the 
court  to  inquire  into  the  transaction 
even  where  a  man's  own  name  had 
been  purchased.  Injunction  granted 
against  use  of  J.  Y.  Morrall  or  W. 
Mogg  &  Co.  Holloway  v.  Clent,  20 
R.  P.  C.  525-27-1903.     Application 


for  interlocutory  injunction.  Plain- 
tiff had  been  a  pill  maker  since  1S37, 
selling  Holloway's  Pills.  In  1897 
Clent,  for  £60,  bought  out  Arthur 
Holloway,  who  had  an  ink,  gum,  fur- 
niture and  paste  business,  with  his 
good-will,  trade  name,  etc.  No  men- 
tion is  made  in  the  agreement  as  to 
the  pill  business  or  trade  possessed 
by  Holloway.  Defendant  then  be- 
gan to  put  up  and  sell  "  Holloway's 
Pills."  Plaintiff  had  a  registered 
mai'k.  He  claimed  to  have  been  es- 
tablished since  1837,  the  date  when 
plaintiff  began  business.  Defendant 
also  wrapped  his  boxes  and  pills  in 
leaflets  issued  by  plaintiff  in  which 
plaintiff  wrapped  his  boxes.  "  It 
certainly  is  not  open  to  a  person  to 
buy  another's  business  and  then  to 
use  the  name  of  the  vendor  of  that 
business,  which  happens  to  be  the 
name  of  a  well-known  manufacturer 
of  a  different  article  to  assist  him  in 
the  sale  and  business  of  that  other 
article."  Mappin  &  Webb  Ld.  v. 
Leapman,  22  R.  P.  C.  398-1905  (Ch. 
Div.).  Plaintiffs  were  the  successors 
in  business  of  two  old  Anns,  Mappin 
Brothers  and  Mappin  &  Webb.  De- 
fendant sold  goods  similar  to  plain- 
tiffs', but  made  by  one  Blyde,  who 
was  alleged,  without  strict  proof,  to 
have  bought  the  business  in  Sheffield 
of  one  Theophilus  Mappin,  trading 
as  Mappin  &  Sons,  and  bore  tickets 


94 


Unfair  Business  Competition. 


Advertisements  stating  or  suggesting  that  the  one  advertis- 
ing possesses  the  good- will  of  one  well  known  in  business,  when 
such  is  not  the  fact,  will  be  enjoined.  Most  of  the  cases  in- 
volving good-will  arise  upon  its  transfer  in  one  way  or  an- 
other—  by  sale,  by  distribution  of  the  property  of  a  decedent, 
by  will,  by  gift,  by  assignment,  by  dissolution  of  partnership, 
etc.  The  various  questions  raised  by  the  transactions  are  con- 
sidered in  the  next  chapter  under  the  head  of  ' '  Transfer. ' ' 

Where  the  principal  value  of  the  property  of  a  racecourse 
company  was  a  privilege  granted  by  a  jockey  club  to  carry  on 
races,  and  it  tried  to  transfer  its  property  to  a  successor  by  a 
deed  merely  of  its  land,  which  deed,  to  escape  stamp  tax,  was 
for  a  consideration  of  £1 0,000,  the  value  of  the  land  only,  when 
the  actual  consideration  for  the  entire  sale  was  greater  than 
that,  it  was  held  that  the  good-will  merely  enhanced  the  land 
value;  it  was  not  a  separate  property  and  the  business  and 
good-will  were  not  separable.16 

In  England  and  the  United  States  injury  to  good-will  has 
not  been  considered  as  a  part  of  the  law  of  unfair  competition, 
but  it  has  been  so  classified  in  Germany  in  section  6  and  7  of 
the  law  Gesetz  Zur  Bekampfung  des  unlauteren  Wettbewerbs, 
passed  May  27,  1896.17  This  statute  allows  restraint  of  inacu- 
rate  statements  in  selling  goods  and  allows,  too,  compensation 
for  injury  suffered  and  a  fine  for  one  who  intentionally  makes 
misleading  statements  as  to  price,  etc. 


with  such  phrases  as  "  Mappin's  A  1 
Quality."  Defendant's  salesmen  rep- 
resented these  goods  to  be  the  same 
as  plaintiffs'.  Held,  that  plaintiffs 
were  entitled  to  an  injunction. 


16  In    re    The   Rosehill    Racecourse 
Co.,  5  State  Reports,  402-1905. 

17  See    articles    on    same,    13    Law- 
Quarterly  Review,  156-1897. 


CHAPTER  V. 

Transfers  of  Trade  Names,  Signs,  Marks,  Etc. 

Section  50.  Names  not  transferable    —  artists,  musicians,  etc. 

51.  Sale  of  entire  property  of  a  business.  —  Rights  of  vendor. 

52.  Presumption  that  no  one  intends  to  part  with  right  to  use  his 

own  name. 

53.  Name  may  be  so  sold  as  to  preclude  the  owners  from  again 

using  it  in  the  same  business. 

54.  Sale  of  business  site,  effect  of  on  names. 

55.  Good  faith  as  to  names  and  marks  required  of  vendors  thereof. 

56.  Transfer  of   portraits. 

57.  Transfers  in  bankruptcy  and  in  assignments  for  creditors. 

58.  Rights  of  retiring  stockholders  and  others  in  corporate  names. 

59.  Soliciting  old  customers. 

60.  Sale  of  name  or  business  by  originator  of  an  article. 

61.  Effect  of  locality  on  transfers  of  a  business. 

62.  Partner's  rights    in  the  partnership  name  on  dissolution. 

63.  Dissolution  by  death  of  a  partner. 

64.  Transfers  by  descent  and  rights  of  descendants. 

65.  Transfer  of  secret  formulae. 

The  law  of  unfair  competition  is  concerned  with  transfers 
of  trade  names  and  marks,  because  many  of  the  cases  in  which 
the  rule  is  invoked,  arise  over  conflicting  claims  of  parties 
whose  rights  depend  upon  the  construction  of  the  transfer 
agreement. 

§  50.  Names  Not  Transferable  —  Artists,  Musicians,  Etc. — 
There  are  some  names  that  become  valuable  which  have  been 
held  not  to  be  transferable.  On  grounds  of  public  policy  the 
right  to  use  the  name  of  an  artist  or  musician  is  not  capable  of 
being  assigned  so  as  to  be  used,  for  example,  in  designating  or 
advertising  a  band,  or  a  series  of  concerts,  with  which  the 
musician  in  question  has  no  connection.1  The  same  is  probably 
true  of  all  professional  names,  whenever  the  repute  of  the 
name  depends  on  the  personality  or  personal  characteristics 

1  Blakely  v.  Sousa,  197  Pa.  St.  305-  Chaney,  143  Mass.  592;  10  N.  E.  713, 
1900;  47   Atl.   2S6,  citing  Eoxie  v.      and  other  eases. 

[95] 


96  Unfair  Business  Competition. 

of  the  individual  in  such  a  way  that  if  used,  except  in  con- 
nection with  that  individual,  the  public  will  not  be  getting  what 
it  has  a  right  to  expect  from  the  use  of  the  name. 

§  51.  Sale  of  Entire  Property  of  a  Business  —  Rights  of 
Vendor. —  Where  an  entire  business  is  sold,  question  often 
arises  as  to  the  rights  of  the  vendor  to  re-enter  the  same  busi- 
ness, to  solicit  the  old  customers,  to  set  up  a  stand  near  the  old 
one,  to  use  the  old  name  in  part  or  in  whole,  to  associate  him- 
self with  former  partners,  to  use  wrappers,  bottles,  cartoons, 
labels  and  trade  names  of  the  old  concern,  to  state  his  former 
connection  with  it,  to  trade  on  its  credit  in  any  way.  If  the 
answer  sets  up  the  terms  of  the  sale,  the  right  of  the  plain- 
tiff to  enjoin  the  defendant  from  any  of  these  acts  may  hinge 
on  their  interpretation. 

"With  the  simple  sale  of  a  business  and  its  attendant  good- 
will there  goes  no  legal  or  equitable  right,  according  to  certain 
authorities,  to  prevent  the  vendor  from  again  entering  the 
same  business.  He  cannot  resume  business  so  as  to  directly 
take  away,  or  put  himself  in  the  way  of  getting,  the  business 
he  has  sold.  Any  of  the  trade  which  would  naturally  go  to 
his  former  place  of  business  or  "  stand,"  or  any  that  would 
be  naturally  attracted  there  because  of  the  name  or  reputation 
which  that  business  bears,  and  which  his  vendee  now  uses,  he 
may  not  seek  to  supply;  but  unless  he  has  specifically  agreed 
in  his  contract  of  sale  not  to  do  so,  he  may,  if  he  chooses,  re- 
enter the  same  line  of  business  in  any  manner  that  does  not 
in  any  way  create  the  impression  that  the  new  business  he 
starts  is  the  old  one,  or  connected  with  it;  or,  in  other  words, 
in  any  way  which  does  not  involve  unfair  conduct  on  his  part. 
The  Encyclopedia  of  the  Laws  of  England,  volume  6,  page  85, 
summarizes  this  rule  by  saying  that  the  purchaser  or  acquirer 
for  value  of  a  good-will  cannot  insist  upon  the  retirement  from 
the  trade  of  the  late  owner  of  the  business,  but,  to  protect  him- 
self, he  must  obtain  an  agreement  restraining  competition  — 
an  agreement  which  must  satisfy  the  tests  laid  down  in  Norden- 
felt  v.  The  Maxim-Nordenfdt  Guns  $  Ammunition  Co.2 

It  is  not  necessary  here  to  discuss  the  principles  of  restraint 

2  (1894)  App.  Cas.  535. 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc. 


97 


of  trade.  This  work  has  to  do  with  these  contracts,  not  in  the 
making,  but  with  the  enforcement  of  them.  It  assumes  that 
the  contracts  referred  to  are  valid  in  that  regard. 

A  court  of  equity  will  protect  a  person  using  a  label  which 
states  the  true  source  of  the  goods  marked  with  it,  under  or- 
dinary circumstances.  For  instance,  a  person  may  sell  to  an- 
other the  right  to  use  his  name,  but  this  person  may  not  enjoin 
a  third  who  sells  goods  actually  made  by  original  maker,  under 
that  maker's  name.  To  enjoin,  in  such  a  case,  would  be  to  en- 
join the  sale  of  a  genuine  article.3 

§  52.  Presumption  that  no  One  Intends  to  Part  with  Right 
to  Use  His  Own  Name. —  Some  courts  have  not  gone  as  far 
as  to  recognize  the  existence  and  force  of  tins  presumption 
but  most  of  them  consider  that  so  important  to  a  person  is  the 
right  to  freely  use  his  own  name  as  a  business  name,  that 
there  is  a  presumption  against  his  having  parted  with  such  a 
right  except  where  an  express  intention  so  to  do  is  shown.4 

§  53.  Name  May  be  so  Sold  as  to  Preclude  the  Owner  from 
Again  Using  It  in  the  Same  Business. —  A  person  may,  if  he 
wishes,  sell  his  name  once  for  all  and  exclude  himself  entirely 
from  the  use  of  it  in  such  a  way  as  to  injure  his  vendee  in 
#ny  unfair  way  in  the  enjoyment  of  his  purchase.  This  is 
now  decided  not  to  be  any  unjust  limitation  on  a  person's  right 
to  the  use  of  his  own  name.5 


8  Samuel  v.  Berger,  24  Barb.  163- 
1856  (N.  Y.  Sup.  Ct.).  Plaintiffs 
were  the  assignees  of  Samuel  who, 
by  agreement  with  one  Brindle,  had 
acquired  the  right  to  use  Brindle's 
name  on  watches  made  by  Samuel. 
Defendants  sold  watches  which  were, 
in  fact,  manufactured  by  Brindle  and 
were  stamped  with  his  name.  Held, 
that  plaintiffs  were  not  entitled  to 
an  injunction  restraining  defendants 
from  so  doing,  the  court  considering 
that  to  grant  such  an  injunction 
would  be  to  prevent  the  sale  of  the 
genuine  article,  and  thus  protect 
plaintiff  in  the  sale,  of  a  simulated 
one. 


'Hazelton  Boiler  Co.  v.  Hazelton 
Tripod  Boiler  Co.,  142  111.  494-1892 ; 
30  N.  E.  339.  "  The  right  of  a  man 
to  use  his  own  name  in  connection  with 
his  own  business  is  so  fundamental 
that  an  intention  to  entirely  divest 
himself  of  such  a  right  and  transfer 
it  to  another  will  not  be  readily  pre- 
sumed, but  must  be  clearly  shown  " 
(id.  p.  508).  This  statement  was 
made  regarding  a  transfer  of  all 
one's  "  right,  title  and  interest  in  a 
business"  and  it  was  held  this  did  not 
pass  the  right  to  use  the  name  of 
the  vendor. 

s  Russia  Cement  Co.  v.  LeParje,  147 
Mass.  206-1888;  17  N.  E.  304.     In 


98 


Unfair  Business  Competition. 


However,  if  one  uses  his  name  unfairly  in  re-entering  busi- 
ness, or  makes  any  attempt  to  reclaim  any  of  the  business  of 
the  concern  he  has  sold  out,  he  will  be  enjoined.  Merely  to 
make  his  own  name  unduly  prominent  may  be  unfair.6  If  in 
the  new  business  the  vendor  makes  use  of  the  identical  name  he 
used  before  or  a  very  similar  one  he  will  undoubtedly  be  en- 
joined.7 This  is  true  of  a  name  of  a  brand  of  goods  or  of  a 
business  name  as  much  as  of  a  personal  name.8    One  member 


1880  LePage  and  Brooks  began  to 
make  LePage  glue,  agreeing  to  use 
LePage's  name.  In  1882  they  sold 
their  business  to  plaintiff,  including 
the  trade-mark  which  was  not  regis- 
tered. In  1886  LePage  drew  out 
and  began  business  for  himself  in 
same  town  with  plaintiff.  Held,  a 
person  may  sell  his  own  name  as  a 
trade  name  and  preclude  himself 
from  further  use  of  it.  Defendant 
enjoined  from  using  "  LePage's 
Improved  Liquid "  or  LePage's 
"  Liquid  Glue,"  and  from  using 
LePage's  Liquid  Glue  Co.  as  name 
of  his  company.  Citing  Horton  Mfg. 
Co.  (N.  T.)  v.  Horton  Mfg.  Co. 
(Ind.),  18  Fed.  816-1883;  McLean  v. 
Fleming,  96  U.  S.  245-1877;  24  L. 
ed.  828;  Dixon  Crucible  Co.  v.  Gug- 
genheim, 2  Brewst.  (Pa.)  321-1869; 
Probasco  v.  Bouyon,  1  Mo.  App.  241- 
1876;  Oakes  v.  Tonsmierre,  4  Woods 
547-1883  (C.  C.  Ala.);  Celluloid 
Mfg.  Co.  v.  Cellonite  Mfg.  Co.,  32 
Fed.  94-1887;  Ainsworth  v.  Walms- 
ley,  L.  R.  1  Eq.  518-1866;  Shaver 
v.  Shaver,  54  Iowa  20S-1880;  6  N. 
W.  188;  S.  Frazer  v.  Frazer  Lubri- 
cator Co.,  121  111.  147-1S86;  13  N. 
E.  639;  Gillis  v.  Hall,  2  Brewst. 
(Pa.)  342-1869;  Kidd  v.  Johnson, 
100  U.  S.  617-1879;  25  L.  ed.  769; 
Hoxie  v.  Chaney,  143  Mass.  592- 
1887;  10  N.  E.  713. 


"Andrew  Jurgens  Co.  v.  Woodbury, 
56  Misc.  (N.Y.)404;106  N.  Y.  Supp. 
571-1907  (Sup.  Ct.  N.  Y.  Sp.  T.). 
Defendant,  John  H.  Woodbury,  Avith 
others,  in  1901  transferred  to  the 
predecessors  of  the  plaintiff  all  trade- 
mark and  other  rights  in  connection 
with  various  preparations,  including 
Woodbury's  Facial  Soap,  which  was 
widely  known.  He  engaged  in  no 
competing  business  until  1906,  when 
he  began  to  sell  a  soap  called 
"  Woodbury's  New  Skin  Soap." 
There  was  no  simulation  of  wrapper 
or  package,  except  that  the  name 
"  Woodbury "  appeared  conspicu- 
ously on  each  box  and  cake.  Held 
unfair  competition. 

7  Probasco  v.  Bouyon,  1  Mo.  App. 
241-1876.  Oakes,  one  of  the  defend- 
ants, was  a  former  partner  of  plain- 
tiff. The  firm  made  candies  known 
as  "  Oakes'  Candies."  Oakes  sold  to 
plaintiff  his  interest  in  the  firm,  the 
bill  of  sale  including  the  exclusive 
right  to  make  and  sell  "  Oakes' 
Candy."  Afterward  he  began  mak- 
ing candies  for  defendant,  who  ad- 
vertised and  sold  them  as  "  Oakes' 
Candies."  Held,  that  defendants 
would  be  restrained  from  selling 
candy  under  that  name. 

8  Myers  v.  Kalamazoo  Buggy  Co., 
54  Mich.  215.  Myers  bought  of 
owners  of  Kalamazoo  Wagon  Com- 
pany all  their  interest  "  in  the  prop- 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc. 


99 


of  a  family  may  sell  out  his  rights  in  a  business  to  another 


erty,  assets,  money  and  good-will,  and 
all  the  other  property  of  every  man- 
ner and  nature  in  and  to  the  firm  of 
the  Kalamazoo  Wagon  Co."  His  ven- 
dors then  organized  the  defendant 
company.  Cooley,  J.,  said :  "  Plaintiff 
was  entitled  to  be  put  in  possession 
of  what  he  had  bought.  The  good- 
will was  a  substantial  part  of  the 
purchase,  and  purposely  to  take  any 
steps  to  prevent  his  receiving  the 
benefit  of  it  was  a  wrong  of  the 
same  nature  as  would  have  been  the 
retention  of  some  portion  of  the  tan- 
gible property  belonging  to  the  stock 
of  the  company.  This  good-will  is 
to  be  found  in  the  probability  that 
the  old  customers  of  the  establish- 
ment whose  dealings  with  it  have 
been  satisfactory  to  them  will  con- 
tinue their  custom  and  commend  it 
to  others."  Listman  Mill  Co.  v.  List- 
man  Milling  Co.,  88  Wis.  334-1894; 
60  N.  W.  261.  William  Listman 
originated  the  trade-mark  or  trade 
name  "  Marvel "  as  applied  to  flour, 
and  the  name  was  used  for  some 
years  by  a  Ann  of  millers  of  which 
he  was  a  member.  During  this 
period  he  registered,  in  his  individual 
name,  a  trade-mark  of  which  "  Mar- 
vel "  was  the  distinguishing  feature. 
The  business  and  the  use  of  this 
mark  or  name  were  continued  by  a 
corporation  formed  by  Listman,  and 
then  by  the  plaintiff  corporation,  in 
which  he  was  largely  interested  and 
of  which  he  was  general  manager. 
There  was  no  formal  assignment  of 
the  trade-mark  or  express  agreement 
regarding  it.  Listman  then  severed 
his  connection  with  plaintiff,  organ- 
ized the  defendant  company  in  an- 
other city,   and   defendant   then  be- 


gan to  apply  the  name  "  Marvel "  to 
its  flour.  Held,  that  plaintiff  had 
acquired  the  exclusive  right  to  the 
use  of  this  mark  or  name.  Giacomo 
Allegretti  v.  Allegretti  Chocolate 
Cream  Co.,  177  111.  129-1898.  "  Trans- 
fer of  the  property  and  effects  of  a 
business  carries  with  it  the  exclusive 
right  to  use  such  trade-marks  or 
trade  names  that  have  been  used  in 
such  business"  (id.  p.  132).  Citing 
Snyder  Mfg.  Co.  v.  Snyder,  54  Ohio. 
St.  86-1896;  43  N.  E.  325;  31  L.  R.. 
A.  657;  Williams  v.  Farrand,  88 
Mich.  473-1891;  50  N.  W.  446;  14 
L.  R.  A.  161;  Fish  Bros.  Wagon  Co.. 
v.  La  Belle  Wagon  Works,  82  Wis. 
546-1892;  52  N.  W.  595;  16  L.  R. 
A.  453;  Merry  v.  Hoopes,  111  N.  Y. 
415-1888;  18  N.  E.  714;  Feder  v. 
Benkert,  18  C.  C.  A.  519;  70  Fed. 
613-1895 ;  C.  S.  Higgins  Co.  v.  Hig~ 
gins  Soap  Co.,  144  N.  Y.  462-1895; 
39  N.  E.  490;  27  L.  R.  A.  42;  Peck 
Bros.  &  Co.  v.  Peck  Bros.  Co.,  113 
Fed.  291-1902;  62  L.  R.  A.  81;  51 
C.  C.  A.  251.  Ayer  v.  Hall,  3 
Brewst.  (Pa.)  509-1871.  Defendant, 
R.  P.  Hall,  had  sold  to  plaintiff  the 
right  in  a  preparation  called  "  Hall's 
Vegetable  Sicilian  Hair  Renewer,"  in- 
cluding the  right  to  use  the  defend- 
ant's name,  and  had  been  enjoined 
from  using  the  name  Hall  in  con- 
nection with  any  similar  preparation 
sold  by  him.  Held,  that  it  was  a 
breach  of  the  injunction  for  him  to 
sell  "R.  P.  Hall's  Improved  Prepa- 
ration for  the  Hair,"  even  though 
accompanied  by  the  words  "  This 
preparation  is  entirely  different  from 
Hall's  Vegetable  Sicilian  Hair  Re- 
newer,  but  is  compounded  by  the 
same  inventor,  R.  P.  Hall." 


100 


Unfair  Business  Competition. 


and  in  a  similar  way  lose  the  right  to  use  his  own  name  to  the 
injury  of  the  vendee.9 

§  54.  Sale  of  Business  Site;  Effect  of,  on  Names. —  This 
question  is  complicated  often,  because  the  name  which  is  trans- 
ferred is  attached  more  or  less  definitely  to  some  locality, 
building,  or  address,  which  has  become  really  a  part  of  the 
name  and  reputation  of  the  business.  This  is  true  frequently 
of  hotels,  breweries,  natural  springs,  newspapers,  and  the 
like.  In  such  cases  he  who  buys  the  buildings,  or  acquires  the 
right  to  occupy  them,  will  have  the  right  to  use  the  name  at- 
taching thereto,  in  the  absence  of  very  explicit  contractual  ar- 
rangement.10 


8  "  Twin  Brothers  "  Yeast.  Where 
one  brother  sold  out  to  the  plaintiff 
-the  purchaser  can  enjoin  the  other 
from  using  the  name.  Burton  v. 
.Stratton,  12  Fed.  696-1882.  Where 
a  merchant  using  name  "  Little 
Jake "  sold  out,  agreeing  not  to 
use  the  name,  he  can  be  enjoined 
from  using  the  name.  Grow  v.  Selig- 
man,  47  Mich.  607-1882;  11  N.  W. 
404. 

10  Vonderbank  v.  Schmitt,  44  La. 
Ann.  204-1892;  15  L.  R,  A.  462; 
10  So.  616.  Plaintiff  owned  and  ran 
■"Hotel  Vonderbank "  or  "Yonder- 
bank  Hotel."  Plaintiff  later  opened 
■"  Cafe  Restaurant  Vonderbank " 
which  was  a  saloon  with  a  few 
rooms.  In  1889  he  sold  the  hotel  to 
one  Dormitzer,  who  assigned  to  cred- 
itors, who  then  conveyed  to  defend- 
ant. Held,  that  the  right  to  use  the 
name  of  plaintiff  must  be  expressly 
understood  to  have  passed  at  the  sale 
or  the  purchaser  may  be  enjoined 
from  using  it.  Defendant  enjoined. 
See  Browne  Trade-Marks  (2d  ed.), 
§§  528-29  on  Hotel  Names.  Huwer 
v.  Dunnenhoffer,  82  N.  Y.  499-1880. 
TDefendants  sold  real  estate  where 
.their    business    was    conducted    and 


certain  personal  property  of  the  busi- 
ness. Defendant  later  set  up  in  an- 
other place  and  used  same  trade 
name.  Held,  their  trade-mark 
"  Silex  "  did  not  pass  with  place  and 
personal  property  or  must  be  specifi- 
cally nominated  in  sale  in  order  to 
pass.  Rickerby  v.  Reay,  20  R.  P.  C. 
380-1903  (Ch.  Div.).  "Reay  & 
Carrick "  began  to  make  farm  ma- 
chines at  A.  in  1875.  Carrick  died 
in  1879.  The  firm  then  became 
"  Jno.  Reay."  In  1880  Rickerby. 
who  was  in  business  at  Carlisle,  sold 
the  machines  as  agent.  Reay  died  in 
1S85.  In  March,  1886,  Rickerby 
bought  the  works.  In  1898  Isaac 
Reay,  the  son  of  John  Reay,  began 
to  make  farm  machinery  in  the  old 
Reay  &  Carrick  works  at  A.,  which 
Rickerby  had  just  vacated.  From 
the  beginning  of  R.  &  C.'s  business 
until  1898  a  certain  machine  had 
been  sold  by  this  concern  with  a  de- 
vice of  a  crown  upon  the  footplate. 
The  machine  was  advertised  as  "  The 
Crown "  and  this  device  was  con- 
tinuously used  by  plaintiff  and 
predecessors  up  to  the  date  of  this 
action.  In  1900  defendant  issued  cir- 
cular    headed     "  Crown      Combined 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        101 

The  Missouri  Appeal  Court  has  held,  iu  Skinner  v.  Oakes,11 
that  courts  do  not  go  to  the  length  of  holding  that  the  name  of 
a  man  may  be  segregated  from  the  man  himself  and  from  his 
business  in  connection  with  which  he  has  used  it,  and  erected 
into  an  ideal  and  abstract  species  of  property,  and  be  made  a 
subject  of  traffic  and  sale  in  the  open  market.  There  is  an  ex- 
ception to  this  in  the  case  of  names  which  are  attached  to  a 
place  of  manufacture.  Judge  Field  says,  in  this  connection, 
that:  "It  is  true,  the  primary  object  of  a  trade-mark  is  to 
indicate  by  its  meaning  or  association,  the  origin  of  the  article 
to  which  it  is  affixed.  As  distinct  property,  separate  from  the 
article  created  by  the  original  producer,  or  manufacturer,  it 
may  not  be  the  subject  of  sale.  But  when  the  trade-mark  is 
affixed  to  articles  manufactured  at  a  particular  establishment 
and  acquires  a  special  reputation  in  connection  with  the  place 
of  manufacture,  and  that  establishment  is  transferred  either 
by  contract  or  operation  of  law  to  others,  the  right  to  use  the 
trade-mark  may  be  lawfully  transferred  with  it.  Its  subse- 
quent use  by  the  person  to  whom  the  establishment  is  trans- 
ferred is  considered  as  only  indicating  that  the  goods  to  which 
it  is  affixed  are  manufactured  at  the  same  place  and  are  of  the 
same  character  as  those  to  which  the  mark  was  attached  by  its. 
original  designer."12  An  assignment  of  trade-marks  without 
any  accompanying  transfer  of  the  business  with  which  they 
are  connected  may  be  valid,  if  they  are  to  be  used  on  goods 

Mowing  &  Reaping  Machine,  manu-  v.  Muller  &  Co.,  App.  Cas.  217-1901,, 
factured  by  Isaac  Ray,  Aspatria,  late  that  plaintiff  had  in  1886  bought 
Reay  &  Carrick."  Others  were  right  to  represent  himself  as  carry- 
headed  "  Crown  Implement  Works,  ing  on  the  old  business,  to  use  the 
A  —  "  then  words  "  Established  crown  device,  and  even  if  this  were 
1875  "  and  device  of  a  crown.  A  not  so,  plaintiff's  goods  had  come  to 
writ  was  issued  in  the  action  for  in-  be  known  as  "  Crown  "  goods.  Plain- 
junction  restraining  use  of  the  tiff's  right  did  not  end  with  the  lease 
crown.  August  16,  1902,  defendant  of  the  old  shops  but  plaintiff  could 
issued  a  very  similar  advertisement,  not  prevent  the  works  being  called 
This  the  court  terms  "  perfectly  un-  "  Crown  Works." 
justifiable  from  any  point  of  view  "  u  10  Mo.  App.  45-61-18S1. 
(id.  p.  387).  Held„citmg  Lord  Lind-  "  Kidd  v.  Johnson,  100  U.  S.  617- 
ley  in  "Inland  Rev.   Commissioners  1879,  at  p.  620;  25  L.  ed.  769. 


102 


Unfair  Business  Competition. 


which  are  made  at  the  same  place  as  before,13  especially  if  the 
marks  indicate  some  connection  with  that  place. 

Such  a  trade  name  attaches  generally  to  the  place  of  manu- 
facture rather  than  to  the  person  of  the  manufacturer.  It  is 
transferred,  not  with  the  person,  but  with  the  business 
itself.14  It  cannot  usually  be  assigned  in  gross,  apart 
from  the  business  to  which  it  relates.15  Where  a  watch- 
maker of  repute  died  leaving  no  business  which  had 
the  right  to  use  his  name  and  the  defendant  subse- 
quently did  use  it,  the  court  refused  to  restrain  him,  hold- 
ing that  the  right  to  the  name  was  not  assignable  in  gross.16 
"Where  a  name  attaches  to  a  place,  it  may  be  fraud  for  a  per- 
son who  buys  it  to  use  the  name  in  carrying  on  there  the  same 


13  Witthaus  v.  Braun,  44  Md.  303- 
1875.  One  Falk,  a  dealer  in  tobacco, 
assigned  to  complainant,  a  member 
of  a  firm  of  manufacturers  wbo  bad 
been  manufacturing  for  Falk,  ac- 
cording to  indications,  all  his  "  {Smok- 
ing Tobacco  Brands."  Held,  that 
while  in  general  trade-mark  rights 
can  be  assigned  only  in  connection 
with  the  business,  this  assignment 
was  valid,  since  the  goods  to  which 
the  brands  belonged  continued  to  be 
manufactured  at  the  same  place  and 
by  the  same  concern. 

u  Bury  v.  Bedford,  4  De  G.  J.  &  S. 
352-1864.  A  trade-mark  or  trade 
name  is  generally  associated  with 
the  place  of  manufacture  rather 
than  with  the  person  of  the  manu- 
facturer, and  may  be  transferred 
with  the  business  to  another,  unless 
peculiarly  personal  in  its  application. 
A  partnership  trade-mark  or  trade 
name  may  be  sold  with  the  other 
partnership  assets  by  the  trustees  un- 
der an  assignment  for  the  benefit  of 
creditors. 

18  Crossman  v.  Griggs,  1S6  Mass. 
275-1904;  71  N.  E.  560. 


19  Thomeloe  v.  Hill,  11  R.  P.  C.  61- 
1894  (Ch.  Div.).  Defendant  was, 
without  any  right  to  do  so,  selling 
watches  marked  "  John  Forrest." 
Held,  however,  that  plaintiff  was  not 
entitled  to  restrain  him  from  doing 
so,  for  the  reason  that  his  right  to 
use  the  name  was  not  established; 
it  was  traced  by  various  steps  to  the 
actual  John  Forrest,  who  died  many 
years  before,  and  the  particular  de- 
fect pointed  out  in  plaintiff's  title 
was  that  the  right  to  use  the  name 
was  not  assignable  in  gross,  without 
some  business  or  good-will  to  which 
it  was  appurtenant.  Fish  Bros. 
Wagon  Co.  v.  Fish  Bros.  Mfg.  Co., 
95  Fed.  457-1899  (C.  C.  A.  8th 
Cir.)  (head-note)  :  "A  right  of  indi- 
viduals to  use  certain  trade  names  and 
devices  in  connection  with  the  manu- 
facture and  sale  of  an  article,  es- 
tablished by  a  judicial  decree,  is  not 
personal,  in  such  sense  that  it  cannot 
be  sold  and  assigned  to  another,  in 
a  different  locality,  in  connection  with 
a  transfer  of  the  good-will  of  their 
business." 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        103 


business  as  that  of  the  former  owner.  But  he  may  use  the 
name  in  a  different  business  although  the  difference  be  slight, 
as  for  instance  between  gin  and  Scotch  whiskey.17 

A  lessee  of  a  theatre  will  be  allowed  to  use  the  name  as 
against  the  lessor  even  if  the  theatre  is  named  with  the  lessor's 
personal  name.18  This  rule  goes  upon  the  theory  that  the  value 
of  a  trade  name  or  trade-mark  rests  on  its  appropriation  by 
one  person  so  that  it  becomes  identified  to  the  trade  with  the 
goods  or  business  site  or  "  stand  "  of  that  person.    Its  value 


"J.  &  W.  Nicholson  &  Co.  v. 
Buchanan,  19  R.  P.  C.  321-1900. 
About  1817  A.  &  Co.  began  to 
carry  on  tbe  "  Black  Swan  Distil- 
lery." In  1897  successors  of  A.  & 
Co.  assigned  to  the  plaintiffs  tbe 
good-will  and  trade-mark,  and  later 
all  the  distillery  plant  was  taken 
from  the  premises.  In  April,  1897, 
defendant,  a  spirit  merchant,  bought 
the  property;  put  up  the  figure  of  a 
black  swan,  and  adveilised  that  the 
"  Black  Swan  Distillery "  had  been 
rebuilt.  His  wagons  were  marked 
"Black.  Swan  Distillery."  Defend- 
ant claimed  he  purchased  premises 
without  restriction ;  that  "  Black 
Swan "  was  nothing  more  than  the 
name  of  the  premises.  The  name 
"  Black  Swan  "  came  from  the  fact 
that  a  public  house  of  that  name  once 
existed  on  the  spot  where  the  distil- 
lery stood.  It  was  more  often  known 
as  "Anderson's  Distillery "  than  as 
"Black  Swan  Distillery."  Held: 
"As  a  general  rule  the  owner  of  land 
or  buildings  of  any  kind  may  affix  to 
it  any  name  he  pleases.  Day  v. 
Brownrigg,  L.  R.  10  Ch.  Div.  291- 
1878.  But  I  apprehend  the  court 
would  interfere  if  a  particular  name 
were  affixed  with  the  view  of  mak- 
ing a  dishonest  .reputation  which 
would  cause  damage  to   another,  as, 


for  example,  if  it  were  used  for  the 
purpose  of  representing  that  a  busi^ 
ness  carried  on  there  was  the  busi- 
ness of  another,  or  even  if,  without 
any  dishonest  intention,  the  user  were 
such  as  actually,  or  probably,  to  mis- 
lead "  (id.  p.  325).  Defendant  had  a 
reputation  as  a  dealer  in  Scotch 
whiskey.  The  Black  Swan  gained  a 
name  as  a  distillery  of  gin  —  not 
whiskey.  Defendant  does  not  deal 
in  gin.  No  evidence  was  shown  of 
anyone  being  misled.  Action  dis> 
missed. 

"Booth  v.  Jarrett,  52  How.  169- 
1876  (N.  Y.  C.  P.  Sp.  T.).  Plain- 
tiff had  built  and  for  about  four 
years  managed  a  theatre  which  be- 
came well  known  as  "  Booth's 
Theatre."  Defendants  afterward 
came  into  control  of  the  theatre  un- 
der lease  in  which  it  was  described  as 
"  Booth's  Theatre,"  and  designated  it 
in  the  advertisement  of  their  per- 
formances by  the  same  name,  repre- 
senting themselves  as  lessees  and 
managers.  Plaintiff  sought  to  re- 
strain them  from  the  use  of  this 
name,  claiming  that  the  public  would 
be  misled  into  believing  that  he  still 
acted  in  and  managed  the  theatre. 
Held,  that  defendants  were  entitled 
to  continue  the  use  of  the  name. 


104  Unfair  Business  Competition. 

depends  on  two  things:  (1)  It  is  the  peculiar  sign  of  that 
place  or  person.  (2)  It  becomes  a  guarantee  of  the  public 
against  deception.  If,  therefore,  it  be  separated  from  the 
merchandise  upon  which  it  is  used,  or  the  locality  with  which 
it  has  become  associated,  it  loses  these  characteristics,  and  so 
becomes  not  only  valueless,  but  is  a  cause  of  deceit  and  fraud, 
instead  of  a  bulwark  against  deception.  Cases  involving  rights 
to  names  of  hotels,  when  a  change  of  ownership  or  of  lease 
occurs,  will  be  found  in  the  chapter  on  Business  Names  (§  89). 
"  A  trade-mark  cannot  be  assigned,  or  its  use  licensed,  except 
as  incidental  to  a  transfer  of  the  business  or  property  in  con- 
nection with  which  it  has  been  used.  An  assignment  or  license 
without  such  a  transfer  is  totally  inconsistent  with  the  theory 
upon  which  the  value  of  a  trade-mark  depends  and  its  appro- 
priation by  an  individual  is  permitted.  The  essential  value 
of  a  trade-mark  is  that  it  identifies  to  the  trade  the  merchan- 
dise upon  which  it  appears  as  of  a  certain  origin,  or  as  the 
property  of  a  certain  person.  When  its  use  has  been  extensive 
enough  to  accomplish  that  purpose,  and  not  till  then,  it  becomes 
property,  and  when  it  so  becomes  property  it  is  valuable  for 
two  purposes:  (1)  As  an  attractive  sign  manual  of  the  owner, 
facilitating  his  business  by  its  use;  (2)  as  a  guaranty  against 
deception  of  the  public.  By  familiarity  with  the  trade-mark 
attached  to  the  owner's  merchandise,  purchasers  are  enabled  to 
buy  what  they  desire,  and  are  thereby  protected  against  impo- 
sition and  fraud.  Disassociated  from  merchandise  to  which  it 
properly  appertains,  it  lacks  the  essential  characteristics 
which  alone  give  it  value,  and  becomes  a  false  and  deceitful 
designation.  It  is  not  by  itself  such  property  as  may  be  trans- 
ferred." 19 

18  MacMahan     Pharmacol     Co.     v.  hand  to  hand  by  assignment  separate 

Denver  Chemical  Mfg.  Co.,  113  Fed.  from  the  business  of  the  owner  of 

468-74;  51  C.  C.  A.  302-1901  (citing  the    trade-mark    or    of    the    article 

authorities).    Falk  v.  American  West  which   it   may   serve   to    distinguish. 

Indies  Trading  Co.,  180  N.  Y.  445-  Generally,   it   passes    only   with   the 

1906 ;   73  N.   E.   1123 ;   1   L.   R.  A.  business  and  good-will  of  which  it  is 

N.   S.   704n.     A  trade-mark   is   not  an  inseparable  part." 
a  piece  of  property  that  passes  from 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        105 

§  55.  Good  Faith  as  to  Names  and  Marks  Required  of 
Vendors  Thereof. —  Where  one  sells  a  business  and  the  buyer 
later  removes  it  to  another  place,  good  faith  requires  that  the 
vendor,  should  he  chance  to  occupy  the  old  stand,  use  great 
care  not  to  do  anything  which  will  cause  the  public  to  con- 
fuse his  new  business  with  that  which  he  has  sold  or  which 
will  deprive  his  vendee  of  any  of  the  benefits  of  his  purchase 
to  which  he  is  rightfully  entitled.  The  same  is  true  where  the 
vendors  later  occupy  stands  near  their  former  one,  now  occu- 
pied by  their  vendee.20    See  §  52. 

§  56.  Transfer  of  Portraits. —  Trade-marks  and  names 
often  are  combined  with  the  portrait  of  some  person  as  well  as 
his  name.  This  fact  does  not  prevent  the  assignment  or  trans- 
fer of  the  name  and  portrait.21  The  death  of  the  person  whose 
name  or  mark  is  used  by  a  firm  does  not  prevent  a  transfer  to 
the  surviving  partners  with  the  right  to  use  the  portrait  and 
name,  provided  the  name  was  a  part  of  the  partnership  or 
corporate  property  and  assets ;  but  unless  the  right  to  use  the 
name  was  distinctively  a  part  of  the  assets,  the  surviving  part- 
ners have  no  such  right  whatever,  and  no  power  to  transfer 
the  right  to  use  the  same.22 


30  Angler  v.  Webber,  96  Mass.  (14 
Allen)  211-1867;  92  Am.  Dec.  748. 
Two  of  three  members  of  a  firm  of 
wagoners  sold  to  the  third  their  in- 
terest and  good-will  in  the  business, 
with  the  property  used  in  it,  and 
agreed  to  do  nothing  to  "  impair  or 
injure  "  such  interest  and  good-will. 
The  retiring  partners  then  purchased 
stands  close  to  the  stand  of  the  pur- 
chasing partner,  engaged  in  busi- 
ness on  the  same  route  as  he,  and 
carried  goods  for  many  former  cus- 
tomers of  the  firm,  but  did  not  di- 
rectly solicit  customers.  Held  to  be 
a  violation  of  the  agreement.  Hall's 
Appeal,  60  Pa.  St.  458-1869;  100 
Am.  Dec.  584.  Defendant,  having 
sold  to  plaintiff  for  a  valuable  con- 
sideration, the  good-will  of  an  under- 


taking business,  removed  to  a  place 
nearby  on  the  same  street  and  ad- 
vertised that  he  had  removed  from 
the  old  to  the  new  place  of  business 
and  that  he  would  there  continue  his 
former  business.  Held,  that  he 
should  be  enjoined  from  thus  holding 
himself  out  to  the  public  as  con- 
tinuing the  business. 

21  Richmond  Nervine  Co.  v.  Rich- 
mond, 159  U.  S.  293-1895;  40  L.  ed. 
155;  16  Sup.  Ct.  30. 

22  Eidd  v.  Johnson,  100  U.  S.  617- 
1879;  25  L.  ed.  769.  S.  N.  Pike,  a 
distiller,  branded  his  goods  "  S.  N. 
Pike's  Magnolia  Whiskey,  Cincin- 
nati, Ohio,"  and  formed  a  firm  to 
continue  the  business,  one  member  of 
which  was  the  defendant,  Kidd.  In 
1868  the  firm  removed  its  business  to 


106 


Unfair  Business  Competition. 


Where  a  manufacturer  sells  goods  to  a  customer  who,  in 
turn,  sells  them  under  another  name,  with  the  consent  of  the 
makers;  and  the  second  concern  sells  its  business  and  good- 
will, and  with  them  transfers  also  the  name  used  by  it  in 
selling  the  goods,  the  purchasers  will  not  be  allowed  to  sell 
goods  of  another  maker  under  this  same  name.  Were  such 
a  use  of  a  name  allowed,  the  original  makers  would  lose  trade 
which  had  been  secured  by  them  in  part  through  the  merit  of 
their  goods.23 


New  York,  and  the  distillery  as  well 
as  the  use  of  all  the  brands  there 
used,  were  transferred  by  Pike  to  a 
firm  of  which  complainants  were  the 
successors.  Held,  that  complainants 
had  thus  acquired  the  exclusive  right 
to  the  use  of  the  words  above  men- 
tioned as  a  trade-mark  and  were  en- 
titled to  enjoin  its  use  by  partners 
acting  under  a  license  from  Kidd, 
claiming  as  survivor  of  the  Pike 
Firm. 

23  Shaver  v.  Heller  &  Merz  Co., 
108  Fed.  821-24^-1901 ;  65  L.  R.  A. 
878  (C.  C.  A.  8th  Cir.).  Heller  made 
"American  Ball  Blue."  No  one  else 
had  used  that  name.  Olmsted  &  Co. 
bought  of  Heller  bluing  which  he 
sold  as  "American  Wash  Blue." 
Shaver  bought  out  Olmsted  and  be- 
gan to  sell  bluing  not  made  by  Heller 
under  the  names  of  "American  Ball 
Blue "  and  "American  Wash  Blue," 
and  seriously  injured  the  business  of 
Heller.  They  contended  that  as  they 
bought  Olmsted's  good-will  they  had 
a  right  to  sell  any  bluing  they  wished 
under  the  name  of  "American  Wash 
Blue,"  because  Olmsted  sold  bluing 
made  by  Heller  and  not  by  himself 
under  that  name.  The  court  held: 
"That  court  (C.  C.  Iowa,  102  Fed. 
882-1900)  came  to  the  conclusion 
that  the  appellants  had  no  better 
right  to  use  the  name  "American 
Wash  Blue "  to  palm  off  the  goods 


of  other  manufacturers  as  those 
made  by  the  appellee  (Heller)  than 
G.  M.  Olmsted  &  Co.  had,  and  that 
the  latter  firm  stood  in  such  a  fiduci- 
ary relation  to  the  appellee  (Heller) 
that  they  could  not  be  permitted  to 
take  such  action.  It  held  that  the 
good-will  of  the  business  established 
under  the  name  '  American  Wash 
Blue '  was  the  property  of  the  ap- 
pellee (Heller)  and  not  of  Shaver 
who  had  bought  the  good-will  of 
Olmsted,  who  had  sold  Heller's 
Wash  Blue.  These  conclusions  are, 
in  our  opinion,  well  founded  in  fact 
and  in  law.  The  excellence  of  the 
article  and  the  introduction  which  the 
appellee  (Heller)  gave  it  or  induced 
Olmsted  &  Co.  to  give  it,  established 
the  trade  in  it,  and  gave  that  trade 
its  value.  Purchasers  in  the  trade 
and  the  public  came  to  know,  to  de- 
mand, and  to  buy  the  appellee's 
manufacture  by  this  brand.  The  in- 
evitable result  is  that  the  good-will 
of  this  trade  became  the  appellee's 
property,  which  neither  Olmsted  & 
Co.  nor  their  successors  could  law- 
fully lead  away  from  it  by  fraud  or 
falsehood.  One  does  not  lose  the 
good-will  of  his  trade  in  an  article 
*  *  *  by  the  fact  that  the  con- 
sumers know  only  the  name  and 
the  excellence  of  the  article,  and 
neither  know  nor  care  who  makes  it." 


Tkansfeks  of  Tkade  Names,  Signs,  Marks,  Etc.        107 


§  57.  Transfers  in  Bankruptcy  and  in  Assignments  for 
Creditors. —  The  fact  that  the  sale  is  an  involuntary  one  on 
the  former  owner's  part,  as  through  bankruptcy,  or  a  receiver- 
ship, will  not  change  the  rule ;  and  he  may  in  such  a  sale  lose 
the  right  to  use  his  own  personal  or  family  surname,  in  so  far 
as  necessary  to  give  the  purchaser  the  benefit  of  what  he  has 
bought.  Purchasers  of  good-will  and  trade  names  in  a  bank- 
ruptcy sale  or  in  a  sale  by  assignees  will  be  protected  against 
injurious  use  of  the  name  by  the  bankrupt  after  his  discharge. 
It  may  be  that  the  name  of  the  business  which  has  been  sold 
in  the  bankruptcy  is  composed  in  part  of  his  own  family  name 
or  some  name  long  used  by  him.  Despite  this,  the  buyer  from 
the  bankrupts  is  entitled  to  be  put  in  control  of  his  purchase 
and  a  court  will  enjoin  the  bankrupt  from  resuming  the  use 
of  the  name.  This  does  not  mean  he  may  not  use  his  own 
name  or  his  firm  name  at  all.  It  does  mean  he  may  not  use  it 
except  in  a  way  to  distinguish  it  clearly  from  the  name  used  by 
the  purchasers.24  An  assignee  for  benefit  of  creditors  may  not, 


u  Armington  &  Sims  v.  Palmer,  21 
R.  I.  109-1S9S;  42  All.  308;  43  L. 
R.  A.  95.  Complainants  were  part- 
ners making  engines  under  the  name 
"Anning-ton  &  Sims."  They  sold  out 
at  auction  to  Scott  who,  with  other 
respondents,  formed  the  corporation 
—  Armington  and  Sims  Company. 
Sims  protested  in  writing  against 
use  of  the  name  at  the  first  directors' 
meeting.  Armington  was  not  pres- 
ent. Respondents  claimed  Arming- 
ton &  Sims  were  not  in  business  after 
corporation  was  formed,  hence  could 
not  suffer  injury.  Held  no  defense, 
as  the  company  might  resume  at  any 
time.  Hudson  v.  Osborne,  39  L.  J. 
N.  S.  Ch.  79-1809.  The  "good- 
will "  in  a  title  to  a  manufactory  of 
certain  provisions  had  been  sold  by 
assignees  in  bankruptcy  to  the  plain- 
tiffs, who  continued  to  carry  on  un- 
der the  title  of  "  Osborne  House  "  a 
business  such  as  that  which  the  de- 


fendant Osborne,  the  bankrupt,  had 
formerly  conducted  under  the  same 
name.  Osborne,  having  been  dis- 
charged in  the  bankrupt  proceedings, 
commenced  anew,  and  used  upon  his 
new  place  of  business  the  words 
"  Osborne  House,"  where  he  carried 
on  the  same  kind  of  manufacturing 
as  before.  He  put  up  signs  on  his 
buildings  and  issued  circulars  calcu- 
lated to  lead  the  public  to  believe 
that  he  was  conducting  the  old  busi- 
ness. The  court  said  that  he  had  no 
right  to  use  the  words  "  Osborne 
House  "  as  holding  out,  in  any  man- 
ner, that  he  was  carrying  on  business 
in  continuation  of  or  in  succession 
to  the  business  originally  conducted 
by  Osborne,  the  defendant.  He 
might  have  said  that  he  had  been 
twenty-two  years  at  the  "  Osborne 
House,"  or  that  one  of  his  partners 
had  been  for  many  years  managing 
there,   but  he   must  not   appropriate 


108 


Unfair  Business  Competition. 


in  disposing  of  assets,  do  anything  which  will  prevent  the 
assignor  from  reaping  all  benefit  which  he  lawfully  may, 
from  his  name  and  reputation.  Selling  labels  bearing  the 
assignor's  name  has  been  held  to  be  an  unauthorized  act  on  the 
part  of  such  an  assignee.26 


to  himself  the  very  words  which  he 
selected  to  designate  the  business. 
Wilmer  v.  Thomas,  74  Md.  485- 
1891;  22  Atl.  403;  13  L.  R.  A.  380. 
Under  an  assignment  for  the  benefit 
of  creditors  by  an  insolvent  manufac- 
turing company,  and  upon  a  sale  by 
the  assignee,  after  advertising  that 
the  mills  were  to  be  sold  as  a  go- 
ing concern,  the  trade-mark  and 
trade  name  (in  this  case  the  "  Druid 
Mills " )  were  held  to  pass  to  the 
purchaser.  Peck  Bros.  &  Co.  v. 
Peck  Bros.  Co.,  113  Fed.  291-1902; 
51  C.  C.  A.  251.  A  trade  name 
passes  by  sale  by  the  receiver  of  an 
insolvent  corporation  which  had  oper- 
ated under  that  name  and  buyers 
could  prevent  others  using  it.  Kidd 
v.  Johnson,  100  U.  S.  617-1879;  25 
L.  ed.  769;  Brown  Chemical  Co.  V. 
Meyer,  139  U.  S.  540-1890;  35  L. 
ed.  247;  11  Sup.  Ct.  65;  Richmond 
Nervine  Co.  v.  Richmond,  159  U.  S. 
293-1895;  40  L.  ed.  155;  16  Sup. 
Ct.  30;  Sarrazin  v.  Irby  Cigar  & 
Tobacco  Co.,  Ltd.,  35  C.  C.  A.  496 ; 
93  Fed.  624-1899;  46  L.  R.  A.  541n; 
LePage  Co.  V.  Russian  Cement  Co., 
2  C.  C.  A.  555;  51  Fed.  941-1892; 
17  L.  R.  A.  354;  Bank  of  Tomah  v. 
Warren,  94  Wis.  151-1896;  68  N. 
W.  549;  A.  D.  Warren  v.  Warren 
Thread  Co.,  134  Mass.  247-1883 ;  see 
Hazelton  Boiler  Co.  v.  Hazelton  Tri- 
pod Boiler  Co.,  142  111.  494-1892;  30 
N.  E.  339;  Frazer  v.  Frazer  Lubri- 
cator Co.,  121  111.  147-1886;  13  N. 
E.  639;   Celluloid  Mfg.   Co.  v.   Cel- 


lonite  Mfg.  Co.,  32  Fed.  94-1887; 
R.  W.  Rogers  Co.  v.  Wm.  Rogers 
Mfg.  Co.,  17  C.  C.  A.  576;  70  Fed. 
1017-1895;  Investor  Pub.  Co.  v.  Dob- 
inson,  72  Fed.  603-1896;  C.  S.  Rig- 
gins  v.  Higgins  Soap  Co.,  144  N.  Y. 
462-1895;  18  N.  E.  714;  Holmes, 
Booth  &  Haydens  v.  Holmes,  Booth 
&  Atwood  Mfg.  Co.,  37  Conn.  278- 
1870.  Chesterman  v.  Seeley,  18  Pa. 
Co.  Ct,  631-1896;  5  Pa.  Dist.  757 
(head-note):  "In  the  absence  of 
proof  to  the  contrary,  it  is  presumed 
that  a  purchaser  of  all  property  of  a 
firm,  including  good-will,  at  a  receiv- 
er's sale,  acquires  as  to  the  name  of 
the  firm  a  right  to  use  the  firm  name 
in  such  manner  as  to  indicate  that 
the  purchaser  is  the  successor  to  the 
dissolved  firm.  Such  a  use  of  the 
firm  name,  although  it  includes  or 
consists  in  the  name  of  an  individual, 
is  the  purchaser's  exclusive  right,  and 
neither  the  individual  whose  name  is 
so  used,  nor  anyone  else,  can  be  al- 
lowed to  interfere  with  it." 

28  Matter  of  Adams,  24  Misc.  (N. 
Y.)  293-1898;  53  N.  Y.  Supp.  666. 
The  assignee  for  the  benefit  of  cred- 
itors of  Robert  Adams,  a  manufac- 
turer, who  had  been  doing  business 
under  the  name  "  R.  &  H.  Adams," 
first  sold  to  one  Robert  F.  Adams, 
certain  goods  manufactured  by  the 
assignor,  and  a  large  number  of 
labels  bearing  the  name  above  men- 
tioned. Held,  that  the  assignee 
should  not  be  authorized  to  sell  the 
right  to  use  "  R.  &  H.  Adams  "  as 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.         109 

§  58.  Rights  of  Retiring  Stockholders  and  Others  in 
Corporate  Names. —  It  lias  been  held  that  one  who  has  origi- 
nated a  trade-mark  or  trade  name  and  has  joined  a  company 
formed  to  push  the  brand  of  goods  to  which  the  name  is  ap- 
plied, and  has  allowed  it  to  use  the  mark,  will  not  be  heard 
later  to  question  the  title  of  the  company  to  the  name.  This 
because  the  name  has  become  a  part  of  the  company's  prop- 
erty.26 Greacen  v.  Bell 2T  is  authority  for  the  statement  that 
where  a  trade-mark  or  trade  name  is  owned  by  one  who  enters 
into  partnership  with  another  for  the  manufacture  of  the 
article  to  which  it  applies,  the  title  to  the  trade-mark  does  not 
pass  to  the  partnership  except  by  express  agreement;  espe- 
cially where,  from  the  circumstances  of  the  case,  it  may  be 
inferred  that  it  was  not  the  actual  intention  of  the  parties  that 
the  trade-mark  should  be  partnership  property. 

Not  only  is  a  retiring  partner  who  sells  his  interest  in  the 
business  thereafter  limited  in  his  use  of  his  own  name,  if  that 
be  a  part  of  the  name  of  the  firm,  but  a  stockholder  whose 
name  is  a  part  of  the  name  of  the  corporation  may  not,  by  the 
mere  act  of  selling  his  stock,  at  once  regain  full  possession  and 
use  of  his  name  which  now  is  also  the  name  of  the  corporation. 
His  rights  to  the  name  are  limited,  and  he  may  use  it  only  in 
so  far  as  his  use  will  not  interfere  with  the  business  of  the 
corporation.  This  is  held,  on  the  ground  that  he  is  presumed 
to  have  sold  his  stock  in  good  faith.  He  must,  therefore,  re- 
spect the  right  and  interest  of  the  corporation  in  its  name  and 
good-will.27a     See  §  105. 

a  trade  name  or  trade-mark,  as  this  use  by  a  company  formed  to  carry 

would  tend  to  confusion,  and  conflict  on  the  business  and  in  which  he  was 

not  only  with  the'  rights  of  the  pur-  largely   interested,   no   objection    can 

chaser   of   the   labels,   but   also   with  be  made  to  its  title,  to  the  mark  or 

the   right   of  the  assignor,   upon  re-  name,  because  of  the  lack  of  a  formal 

suming  business,  to  use  his  own  name  transfer    thereof     to     the    company, 

and    avail   himself    of    his    personal  *  115  Fed.  553-1902  (C.  C.  N.  J.), 

reputation.  27a  See  also  discussion  in  chapter  on 

26  Filkins  v.  Blackman,  13  Blatchf .  "  Family    Names,"    §    77.       McFell 

(Conn.)    440-1876;    Solis   Cigar   Co.  Electric  &   Telephone  Co.  v.  McFell 

v.  Pazo,  16  Colo.  288-1891;  26  Pac.  Electric  Co.,  110   111.   App.  182-85- 

556.     The  inventor  of  a  trade-mark  1903.     McFell   was   an   incorporator 

or  trade  name  having  permitted  its  of  the  McFell  Electric  Company  in 


110  Unfair  Business  Competition. 

§  59.  Soliciting  Old  Customers. —  In  retiring  from  a  firm 
or  corporation  the  one  so  retiring  does  not  agree  that  the  busi- 
ness will  continue,  even  when  he  agrees  not  to  enter  that  line 
of  business  for  a  certain  period.  It  may  continue,  it  may  go 
elsewhere.  Certainly  if  he  leaves  without  making  an  agree- 
ment about  again  entering  business,  there  is  no  reason  why  it 
should  not  follow  him,  provided  (and  here  is  where  the  law 
of  unfair  competition  steps  in)  he  does  nothing  to  induce  these 
customers  to  think  that  his  new  business  or  the  goods  made 
by  his  new  concern  is  the  old  business,  or  are  the  goods  made 
by  the  old  business.  In  leaving  the  old  house  he  sells  that 
part  of  his  interest  in  it  which  legitimately  attaches  to  the 
name  and  the  location  or  stand  of  that  business,  as  contrasted 
with  those  interests  which  attach  to  him  personally.  These  he 
resigns  to  the  old  house  only  by  special  agreement.  He  sells 
only  such  of  the  trade  as  the  house  can  keep  its  grip  on  re- 
gardless of  his  leaving,  provided  he  does  thereafter  nothing  to 
fraudulently  deprive  them  of  this  business. 

It  is  urged  that  if  a  retiring  partner  solicits  the  customers 
of  the  house  he  has  left,  he  is  impairing  the  value  of  the  thing 
he  has  sold.  That  it  may  be  impaired  is  quite  true,  but  if 
the  law  allows  him  to  enter  business  only  in  such  a  way  as 
to  divert  no  business  from  the  older  concern,  now  necessarily 
his  competitor,  there  is  no  real  competition. 

Where  a  partnership  dissolution  agreement  provides 
that  no  further  business  shall  be  done  under  the  name  of 
the  firm,  each  partner  is  considered  to  have  reserved  the  full 
right  to  use  his  own  name.28    If  one  of  the  partners  buys  the 

1890.  In  April,  1900,  he  sold  his  in-  ness  to  McWade  for  a  valuable  con- 
terest.  May,  1901,  he  formed  the  sideration,  as  he  did,  he  could  not 
McFell  Electric  and  Telephone  Com-  afterward  resume  the  use  even  of  his 
pany  and  began  to  compete  with  the  own  name  in  carrying  on  the  same 
old  company,  with  an  office  in  the  business  during  the  lifetime  of  the 
same  building.  December,  1900,  corporation  in  such  a  way  as  to  mis- 
charter  of  the  old  company  had  ex-  lead  the  public."  Citing  Frazer  v. 
pired.  McFell  was  one  of  the  signers  Frazer  Lubricator  Co.,  121  111.  147- 
of  a  petition  for  a  license  for  a  new  1886 ;  13  N.  E.  639. 
company  under  same  name,  which  2S  Cottrell  v.  Babcock  Printing 
was  granted  May,  1901.  Held,  "  that  Press  Mfg.  Co.,  54  Conn.  122 ;  6  Atl. 
when  he  sold  out  his  stock  in  the  791-1886. 
company  and  his  interest  in  its  busi- 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        Ill 


good-will  and  old  stand,  and  continues  the  business,  he  has 
the  right  merely  to  conduct  a  business  at  that  particular  place, 
with  the  probability  in  his  favor  that  customers  of  the  old  com- 
pany will  continue  to  go  there. 

Some  jurisdictions  allow  to  an  ex-partner  all  rights  of  ad- 
vertising and  soliciting  of  trade  except  to  seek  personally  the 
trade  of  the  customers  of  the  former  concern.  Other  courts 
have  said  that  to  refuse  personal  access  to  former  customers  is 
in  a  sense  restraint  of  trade,  and  all  such  restraint  must  arise 
out  of  personal  agreement,  and  from  construction  of  law.29 

The  rule  to  be  gotten  from  the  authorities  seems  to  be  that 
old  customers  may  be  solicited  personally  and  in  any  other 
legitimate  way  by  a  retiring  partner,  who  is  not  bound  by 
special  agreement  not  to  compete  with  those  running  the  old 
concern,  but  in  doing  so  he  may  not  use  any  method  which 
will  create  confusion  in  the  mind  of  the  public  as  to  which  is 
Ms  own  new  business  and  which  is  the  old  business.  If  either 
partner  desires  more  he  must  see  to  it  that  it  is  provided  for 
in  a  special  agreement.30 


29  These  cases  deal  with  the  ques- 
tion :  Cook  v.  Collingridge,  Jacob  607- 
1825;  Crutwell  v.  Lye,  17  Ves.  335- 
1810 ;  Johnson  v.  Helleley,  2  De  G. 
J.  &  S.  446-1864;  Churton  v.  Doug- 
las, 28  L.  J.  N.  S.  (Ch.)  841-1859; 
Ginesi  v.  Cooper  <&  Co.,  14  Ch.  Div. 
596-1880;  Leggott  v.  Barrett,  15  Ch. 
Div.  306-1880,  see  appeal;  Walker  v. 
Mottram,  19  Ch.  Div.  355-1881; 
Labouchere  v.  Dawson,  L.  R.  13  Eq. 
Cas.  322-1872;  Pearson  v.  Pearson, 
L.  R.  27  Ch.  Div.  145-1884;  Hall's 
Appeal,  60  Pa.  St.  458-1869 ;  Angier 
v.  Webber,  14  Allen  (Mass.)  211- 
1867;  Bergamini  v.  Bastian,  35  La. 
Ann.  60-1883;  Hanna  v.  Andrews, 
50  Iowa  462-1879. 

80  Cottrell  v.  Babeock  Printing- 
Press  Mfg.  Co.,  54  Conn.  122;  6 
Atl.  791-1886  (head-note)  :  "A 
partner  who,  upon  dissolution  of 
partnership,  purchases  the  good-will 


secures  merely  the  right  to  conduct 
the  old  business  at  the  old  stand,  and 
in  the  absence  in  the  contract  of  dis- 
solution or  stipulations  to  the  con- 
trary, the  retiring  partner  may  law- 
fully establish  a  similar  business, 
even  in  the  neighborhood,  and  by  ad- 
vertisement, circular,  card,  and  per- 
sonal solicitation,  invite  the  public 
generally,  including  the  customers  of 
the  old  firm,  to  come  there  and  pur- 
chase of  him."  But  he  must  not  so 
advertise  and  solicit  as  to  lead  to  the 
belief  that  he  is  the  successor  to  the 
old  firm,  or  that  the  purchaser  of  the 
good-will  is  not  carrying  on  the  busi- 
ness formerly  conducted  by  the  old 
firm.  Hoxie  v.  Chaney,  143  Mass. 
592-1887;  10  N.  E.  713.  Hoxie 
sold  his  trade-mark,  good-will,  etc., 
in  "A.  N.  Hoxie's  Mineral  Soap," 
and  then  began  to  manufacture  soap 
and  put  up  his  soap  in  similar  wrap- 


112  Unfair  Business  Competition. 

The  extremes  to  which  courts  have  gone  in  discussing  the 
rule  are  very  well  illustrated  by  Genesi  v.  Cooper  &  Co.,32 
where  James,  L.  J.,  writes  as  follows:  "  The  command  '  Thou 
shalt  not  steal!  '  is  as  much  a  portion  of  the  law  of  courts  of 
equity  as  it  is  of  courts  of  law.  The  proposition,  as  I  under- 
stand it,  which  has  been  gravely  argued  before  me  is  this,  that 
a  trader  who  has  sold  for  value  his  business  and  good-will  to 
another  man  is  entitled,  notwithstanding,  to  solicit  his  old  cus- 
tomers to  deal  with  him  just  as  if  no  sale  had  ever  taken  place. 
In  my  opinion,  the  defendants  having  sold  the  business,  the  at- 
tempt to  take  it  away  from  the  plaintiff  in  the  way  I  have 
mentioned,  is  neither  a  lawful  nor  an  honest  attempt;  and  I 
consider  that  I  should  not  be  performing  my  duty  in  an  ade- 
quate and  proper  manner  if  I  hesitated  for  a  moment  to  state 
that  that  was  my  opinion  "  (id.  p.  598).  "  The  present  in- 
junction asked  from  me  is  only  to  restrain  the  defendants  from 
soliciting  the  old  customers  and  from  taking  away  the  plain- 
tiff's business,  which,  of  course,  must  be  right  anyhow;  but 
if  I  had  been  asked,  I  certainly  should  have  prevented  their 
dealing  with  the  old  customers.  Can  it  be  tolerated  that  men 
who  have  sold  their  business,  including  the  benefit  of  their 
connection  —  here  they  have  sold  their  trade,  business,  and 
'  good-will ;  ' —  I  will  come  in  a  moment  to  what  '  good-will  ' 
means  —  can,  immediately  after,  take  away  the  benefit  of  that 
connection  so  sold.  I  gave  an  illustration  during  the  course 
of  the  argument,  which  I  will  repeat.  Suppose  a  solicitor  sells 
his  business,  say  at  five  years'  purchase,  which  is  by  no  means 
uncommon,  could  he,  having  offices  on  the  first  floor,  imme- 

pers  bearing  the  trade-mark  he  had  trade-marks  and  good-will.  The  re- 
sold. Held,  he  had  the  right  in  ab-  tiring  partner  here  was  enjoined 
sence  of  express  stipulation  in  the  from  "virtual  representation  of  him- 
sale,  to  again  enter  the  same  business,  self  as  the  successor  to  the  business 
but  he  had  no  right  to  represent  him-  of  the  old  firm,"  and  was  directed 
self  as  successor  of  the  former  busi-  "  not  to  interfere  or  compete  with 
ness  or  as  owner  of  the  trade-marks,  the  business  "  of  the  old  firm  "  by 
and  an  injunction  was  granted,  re-  representing  himself,  either  directly 
straining  him  from  interfering  with  or  by  implication,  as  the  successor  of 
vendee's  business  by  representing  the  late  firm  or  as  doing  the  same 
himself  as  successor  of  the  late  firm,  business  that  was  done  by  them." 
Assets     of     a     partnership     include  3214  Ch.  Div.  596-98-99-1880. 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        113 

diately  afterward  go  on  to  the  ground  floor,  paint  up  his 
name  and  receive  his  clients  as  usual  because  they  choose  to 
come  to  him,  even  if  he  did  not  actually  ask  them  to  come  and 
transact  their  business  with  him1?  The  answer  would  be  that 
he  was  stealing  that  which  he  had  sold,  and  any  conduct  more 
outrageous  or  more  opposed  to  morality  or  law  could  not  well 
be  imagined  "33  (at  p.  599). 

Few  cases  have  gone  to  the  extent  here  advocated,  viz.,  to 
forbid  not  only  soliciting  but  even  dealing  with  former  cus- 
tomers. This  would  surely  seem  restraint  of  trade.  On  the 
other  hand  Labouchere  v.  Dawson?*  holds  that  one  who  sells 
the  good-will  of  a  business  is  not  precluded  from  engaging  in 
a  competing  business,  or  from  advertising  his  business,  but 
he  cannot  directly  solicit  trade  from  the  customers  of  the  old 
business ;  and  in  Pearson  v.  Pearson?5  James  Pearson,  the  de- 
fendant, had  assigned  all  his  interest  in  various  property  de- 
rived under  his  father's  will,  including  the  business  of  an 
earthenware  manufacturer,  carried  on  by  his  father  under  the 
name  James  Pearson,  to  plaintiff,  with  an  express  provision, 
however,  that  defendant  should  be  at  liberty  to  carry  on  a 
similar  business  under  his  own  name,  while  plaintiff  was  to 
discontinue  using  the  name  James  Pearson.  Plaintiff  sought 
to  enjoin  the  defendant  from  soliciting  the  old  customers  of 
the  business  in  which  defendant  had  assigned  his  interest. 

"  Ginesi  v.  Cooper  &   Co.,  14  Ch.  stone  merchants,  as  "  Samuel  Cooper 

Div.  596-1880.     Prior  to  1887,   de-  &  Company,"   and  solicited  business 

fendants  carried  on  business  as  stone  from  the  customers  of  the  old  firm, 

merchants      under      the      style      of  They  distributed  business  cards  and 

"  Cooper    &    Hampson."      They   are  sent    their    former    manager   around 

now  called  "  Samuel  Cooper  &  Com-  for  orders.     This  is  a  motion  for  an 

pany."       The    plaintiff    is    a    stone  injunction  restraining  the  defendants 

merchant    of    Leeds,    who,    in    1877,  from    soliciting    orders    from    their 

purchased  the  business  of  Cooper  &  former  customers. 

Hampson.      The    good-will   was    in-  "*  L.    R.    13    Eq.    322-1872.       La- 

eluded.        The      day     the     business  bouchere  v.  Dawson  was  overruled  by 

changed  hands,  Cooper  &  Hampson  Pearson  v.  Pearson,  L.  R.  27  Ch.  Div. 

sent  circulars  to  their  customers  an-  145-1884,  which  in  turn   was  over- 

nouncing  that  they  had  retired  from  ruled  by  Trego  v.  Hunt,  (1896)  App. 

business,    and    that   they   had   trans-  Cas.  7,  which  case  followed  Labouch- 

ferred  it  to  the  plaintiff.     In   1879,  ere  v.  Dawson. 

defendants  recommenced  business  as  ffiL.  R.  27  Ch.  Div.  115-1884. 


114  Unfair  Business  Competition. 

Held,  that  defendant  had  this  right  and  would  have  it  even 
in  the  absence  of  the  express  provision  above  mentioned. 

The  Illinois  court  states,  that  the  rule  as  to  soliciting  old 
customers  is  unsettled.  It  cites  Trego  v.  Hunt?5*  as  authority 
for  the  English  rule  that  a  vendor  of  good-will  may  not  can- 
vass customers  and  solicit  them  not  to  deal  with  his  vendee, 
and  urge  them  to  deal  with  him,  and  adopts  this  rule, 
citing  various  authorities.3511  "  We  do  not  think  that  the  de- 
fendant ought  to  be  allowed,  after  selling  and  warranting  a 
good-will  to  the  complainants,  to  purposely  endeavor  to  pre- 
vent their  receiving  the  benefit  of  it,  or  to  attempt  to  disturb 
them  in  its  enjoyment.  The  locality  chosen  by  her  was  not 
near  enough  (600  feet)  to  have  that  effect.  But  to  canvass 
old  customers  of  the  firm  and  endeavor  to  dissuade  them  from 
continuing  to  deal  with  complainants  was  a  direct  interference 
with  the  property  sold,  with  the  purpose  of  destroying  it 
and  preventing  complainants  having  the  benefit  and  advantage 
of  it.  The  attempt  to  appropriate  the  telephone  number  *  *  * 
was  of  the  same  character.350 

§  60.  Sale  of  Name  or  Business  by  Originator  of  an  Article. 
—  One  who  has  originated  an  article,  on  selling  out  the  good- 
will of  his  business,  may  still  advertise  that  he  originated  the 
article  and  continue  to  sell  it,  in  the  absence  of  a  stipulation 
to  the  contrary.  He  may  also  state  honestly  where  he  form- 
erly lived,  the  experience  he  has  had,  the  skill  he  possesses.39 


•6a 

35b 


(1896)   App.  Cas.  7.  but  they  have  no  right  to  represent 

Meyers  v.  Kalamazoo  Buggy  Co.,  their   present   business   as  the   same 

54  Mich.  215;  20  N.  W.  545;  52  Am.  which    they    formerly    conducted    at 

Rep.  811  ;   Coal  Co.  v.  Spongier,  54  Racine.     The  circular  addressed   '  to 

N.  J.  Eq.  354,  34  Atl.  932.  our  old  customers  and  the  implement 

"cRenft  v.  Reimer,  200  111.   386-  trade,'  issued  by  Fish  Brothers  and 

1902 ;  65  N.  E.  720.  Company,  and  mentioned  in  the  com- 

**  Fish   Bros.   Wagon   Co.  v.   Fish,  plaint  and  the  foregoing  statement,  is, 

82  Wis.  546-67-1892;   16   L.  R.  A.  to  a  limited  extent,  objectionable  on 

453 ;  52  N.  W.  595.     "  The  defend-  this  ground ;  as  for  instance,  where  it 

ants  have  the  lawful  right  to  honestly  speaks  of  their  '  change  of  location  ' 

and  truthfully  state  where  they  form-  and    '  firm    name,'    '  Fish    Brothers,' 

erly  resided,  the  experience  they  have  '  formerly  of  Racine,  Wisconsin,'  and 

respectively  had,  and  the  skill  they  for  the  '  first  time  since  1883  we  shall 

respectively  possess  in  the  manufac-  be  able  to  furnish  our  patrons  with 

ture  of  wagons  and  other  vehicles;  the  genuine  Fish  Brothers  and  Com- 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        115 


§  61.  Effect  of  Locality  on  Transfers  of  a  Business.—  It  is 
fraud  for  a  partner  who  sells  to  an  associate  his  share  of  the 
good-will  of  a  partnership  to  send  notices  of  his  opening  a 
new  office  in  the  same  locality  as  the  old  office,  even  after  a 
lapse  of  several  years  after  the  sale.37 

It  is  not  unfair  for  the  vendor  of  a  newspaper  to  set  up  a 
new  plant  and  publish  another  newspaper  in  the  same  locality 
served  by  his  former  paper.38 


pany  wagon,  fully  up  to  our  old 
standard  of  that  date.'  But  the  de- 
fendant may  truthfully  and  in  good 
faith  publish  the  good  qualities  and 
material  of  the  wagons  and  vehicles 
manufactured  by  them,  and  their  su- 
perior facilities  for  the  manufacture 
of  the  same  at  South  Superior.  In 
other  words,  their  advertisements  and 
marks  must  truthfully  and  in  good 
faith  refer  to  their  own  manufac- 
tures, trade,  and  business,  and  not 
to  those  of  the  plaintiff."  White  v. 
Trowbridge,  216  Pa.  St.  11-1906; 
64  Atl.  862.  Defendant  made  choco- 
late chips,  and  claimed  to  be  the 
originator  of  that  particular  kind  of 
confectionery,  to  which  he  applied 
the  name  "  Trowbridge's  Chocolate 
Chips."  He  admitted  the  plaintiffs 
to  a  partnership  which,  after  two 
years,  was  dissolved,  the  defendant 
selling  and  assigning  to  plaintiffs  all 
his  rights  in,  or  connected  with,  the 
business  including  the  good-will.  De- 
fendant within  a  few  months  began  in 
the  same  city  the  manufacture  of  the 
same  sort  of  confectionery,  marking 
the  packages  "  Chocolate  Chips,"  and 
placing  thereon  his  name,  W.  S. 
Trowbridge.  He  solicited  trade  gen- 
erally and  described  himself  as  the 
"  originator  of  the  Chocolate  Chips." 
His  goods  and  packages  as  to  mark- 
ings, labels,  and  dress  were  sufficiently 
differentiated  from  plaintiffs'.     Held, 


that  defendant  was  within  his  rights; 
that  if  the  intention  of  the  parties 
had  been  that  the  defendant  should 
not  engage  in  a  competing  business, 
that  should  have  been  expressly 
stipulated. 

"Foss  v.  Roby,  195  Mass.  292; 
81  N.  E.  199-1907.  Defend- 
ant and  plaintiff  had  formerly 
practiced  dentistry  as  partners  in 
Boston,  many  of  their  patients  com- 
ing from  places  outside  Boston.  The 
partnership  was  dissolved  and  de- 
fendant conveyed  to  Foss  his  interest 
in  the  business.  After  three  years  he 
began  to  practice  again  in  Boston,, 
sent  circulars  to  patients  of  the  old 
firm  soliciting  their  patronage,  refer- 
ring to  his  connection  with  the  old 
firm,  and  thus  attracted  many  of 
these  former  patients.  Held,  that 
this  was  inconsistent  with  the  cove- 
nant that  would  be  implied  from  the 
transfer  of  his  interest  in  the  good- 
will that  he  would  not  practice  in  the 
same  locality  under  such  conditions 
as  to  impair  the  value  of  the  good- 
will transferred  by  him.  Defendant 
enjoined  from  practicing  in  Boston; 
damages  of  plaintiff  to  be  assessed. 

38  Eapp  v.  Over,  3  Brewst.  (Pa.) 
133-1869.  Defendant,  owning  a. 
newspaper  called  "  The  Bedford  In- 
quirer," sold  it,  with  all  the  stock 
and  "  good-will "  to  M.,  and  after- 
ward began  to  publish  another  news- 


116  Unfair  Business  Competition. 

§  62.  Partners'  Rights  in  the  Partnership  Name,  on  Dis- 
solution.—  There  is  no  intimation  in  the  cases  that  a  man 
is  not  free  to  use  his  name  after  leaving  a  partnership,  in  the 
absence  of  express  stipulation  to  the  contrary;  but  if  he  does 
use  it  in  competition  with  the  old  concern,  he  must  not  in  any 
way  hold  himself  out  as  the  real  owner  of  the  old  business. 
That  is  the  only  limitation  on  his  right  to  his  own  name,  unless 
there  be  specific  contract  provisions  as  to  it  in  the  dissolution 
articles.38 

If,  upon  the  dissolution  of  a  firm,  the  partners  divided  among 
themselves  the  tangible  assets,  nothing  being  done  or  said  re- 
garding the  use  of  the  firm  name,  the  name  is  an  undivided 
asset  of  the  partnership,  which,  upon  dissolution,  belongs  to 
both  partners  in  common,  so  that  one  may  not  enjoin  the  use 
of  it  by  the  other.  If,  however,  the  whole  business  and  good- 
will is  sold  upon  the  dissolution,  the  trade  name  would  also 
pass  to  the  purchaser.40 

A  sale  by  one  partner  of  his  entire  interest  in  a  dentistry 
partnership  has  been  held  to  warrant  a  court  in  holding  that 
there  was  an  implied  contract  that  the  vendor  would  not  again 
practice  in  the  locality  under  such  conditions  as  would  impair 
the  value  of  the  good-will  sold  by  him.  To  begin  practice  in 
the  same  town  and  send  notices  to  former  patients  has  been 
held  to  be  an  impairment  of  the  value  of  the  good-will.41     A 

paper  in  the  same  place  under  the  defendant  "  has  the  right  to  use  the 

name    of    the    "  Bedford    Patriot."  name  of  the  assignor  for  the  purpose 

Held,  that  the  defendant,  in  the  ab-  of  showing  that  the  business  is  the 

sence   of   any   express   agreement   to  business  formerly  carried  on  by  the 

the  contrary,  was  at  liberty  to  pub-  assignor;  and  he  has  the  full  right  to 

lish  such  a  competing  newspaper.  use  it,  subject  to  this:  that  he  must 

"  Thynne    v.    Shove,   45    Ch.    Div.  not  exercise  that  right  so  as  to  ex- 

577-80-1890.     Thynne  sold  to  Shove  pose  the  assignor  to  any  liability  by 

"  all  the  beneficial  interest  and  good-  holding  him  out  to  be  the  real  owner 

will  of   the   said   Arthur   Thynne   in  of    the   business.     That   is   the   only 

the  said  trade  or  business  of  a  baker  limit  of  the  defendant's  right  to  use 

and   pastry   cook,   so   carried   on   by  the  plaintiff's  name." 

him  as  aforesaid."     Plaintiff  alleged  "Banks  v.  Gibson,  34  Beav.  5G6- 

that  defendant  issued  cards  in  plain-  1865. 

tiff's  name  intimating  to  the  public  "Foss  v.   Roby,   195  Mass.  292,  81 

that  plamtiff  was  still  carrying  on  the  N.  E.  199-1907;  see  note  36  supra, 

business.    Held,  by  Sterling,  J.,  that  for  statement  of  this  case. 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        117 


former  partner  will  not  be  allowed  to  make  a  colorable  use 
of  the  name  of  a  person  who  was  once  associated  with  him 
in  business,  even  by  nominally  going  into  a  new  partnership 
with  someone  of  the  same  name.  The  new  association  must 
be  a  bona  fide  one,  or  the  court  will  regard  it  as  an  unfair 
attempt  to  obtain  the  custom  of  the  former  concern.42 

A  partner  who  has  retired  from  a  firm  which  bore  his  name, 
or  a  member  of  a  corporation  which  bears  his  name  who  sells 
his  interest  in  the  corporation  totally  or  nearly  so,  may  not 
prevent  the  remaining  partners  or  the  corporation  from  stat- 
ing that  it  is  continuing  the  old  business  or  is  its  successor.41 


*  Eildreth  v.  McCaul,  70  App.  Div. 
(N.  Y.)  162-1902  (1st  Dept.) ;  74 
N.  Y.  Supp.  1072.  Hildretb  &  Se- 
gelken  had  for  many  years  been 
dealers  in  honey,  beeswax,  etc.,  at 
120  and  122  West  Broadway.  In 
May,  1901,  they  moved  to  another  lo- 
cation, whereupon  defendant,  who 
had  many  years  before  been  for  a 
while  a  member  of  the  firm,  moved 
into  the  old  place  and  opened  busi- 
ness under  the  name  "  Hildreth-Mc- 
Caul  Company "  with  "  Joseph  M. 
McCaul,  Prop."  in  small  letters  below. 
He  claimed  to  have  formed  a  part- 
nership with  one  Hildretb,  a  former 
member  of  plaintiff's  firm,  but  there 
was  evidence  tending  strongly  to  show 
that  there  was  no  bona  fide  partner- 
ship. It  also  appeared  that  custom- 
ers had  been  deceived  by  circulars 
issued  by  defendant  into  supposing 
him  to  be  plaintiff's  successor.  Held, 
that  the  defendant  was  not  entitled 
to  use  the  name  Hildreth  as  he  had 
been  doing,  and  that  he  should  be  en- 
joined from  using  it  at  all  until  the 
further  order  of  the  court. 

"Smith  v.  David  H.  Brand  &  Co., 
67  N.  J.  Eq.  529-1904;  58  Atl.  1029.  • 
Complainant,  William  Smith,  had  for 
many  years  been  in  -partnership  with 


David  H.  Brand  under  the  firm  name 
"  Brand  &  Smith."  In  1904  the  part- 
nership was  dissolved  and  the  defend- 
ant corporation,  "  David  H.  Brand  & 
Co.,"  was  organized  by  the  two  part- 
ners and  one  John  H.  Brand.  The 
two  partners  conveyed  to  this  cor- 
poration the  assets  and  "  good-will  " 
of  the  firm.  Complainant  very  soon 
sold  his  interest  in  the  corporation  to 
the  corporation,  retaining  only  one 
share,  and,  within  a  few  months, 
formed  with  his  brother,  a  partner- 
ship under  the  name  "  William 
Smith  &  Brother,"  to  carry  on  the 
same  business  as  the  defendant.  He 
then  sought  to  enjoin  defendant  from 
advertising  its  business  under  the 
name  of  "  Brand  &  Smith "  or  as 
"  Successors  of  Brand  &  Smith," 
claiming  that  this  tended  to  deceive 
the  public.  Held,  that  the  defendant 
had  not  exceeded  its  rights.  Merry 
v.  Hoopes,  111  N.  Y.  415-1888;  IS 
N.  E.  714  (head-note):  "Where 
upon  the  dissolution  of  a  firm,  one 
of  the  copartners  purchases  and  suc- 
ceeds to  the  business,  the  exclusive 
right  to  use  trade-marks  belonging  to 
the  firm  passes  to  the  purchaser,  al- 
though no  express  mention  is  made 
of  them  in  the  deed  of  assignment.'* 


118 


Unfair  Business  Competition. 


Where  Kottler  did  business  as  "  H.  Kottler  &  Co."  and  then 
took  in  Lepow  and  continued  to  use  the  same  name  for  the 
new  partnership,  it  was  held  that  after  three  or  four  years 
3iad  passed  and  the  firm  was  dissolved,  Lepow  could  not  in  the 
absence  of  special  provision  prevent  Kottler  from  still  using 
the  name  H.  Kottler  &  Co.;  although  it  was  intimated  that 
Lepow  would  be  enjoined  from  using  the  sign  "  L.  Lepow, 
formerly  (in  small  letters)  H.  Kottler  &  Co."  See  ■§§  216,  222. 

It  would  seem  that  both  these  rulings  might  result  in  con- 
fusion and  the  better  decision  in  cases  of  this  sort  would  be  to 
limit  both  parties  to  such  use  of  the  firm  name  as  could  not 
cause  confusion  as  to  which  partner  was  carrying  on  the  old 
business.4351 

Vice-Chancellor  Plumer  said  that  "  a  person  not  a  lawyer 
would  not  imagine  that  when  the  good-will  and  trade  of  a 
Tetail  shop  were  sold,  the  vendor  might,  the  next  day,  set  up  a 
.-shop  within  a  few  doors  and  draw  off  all  the  customers.  The 
good-will  of  such  a  shop,  in  good  faith  and  honest  understand- 
ing, must  mean  all  the  benefit  of  the  trade  and  not  merely  a 
benefit  of  which  the  vendor  might  the  next  day,  deprive  the 
vendee.  "43b 

As  to  rights  to  partnership  papers,  see  §  223. 


^Lepow  v.  Kottler,  115  App.  Div. 
(N.  Y.)  231-1906;  100  N.  Y.  Supp. 
779.  Defendant  Kottler,  who  had 
previously  been  doing  business  un- 
der the  name  of  H.  Kottler  &  Co., 
formed  a  partnership  with  plaintiff 
under  the  firm  name  of  H.  Kottler 
■&  Co.  It  was  agreed  that,  upon 
■dissolution,  the  party  bidding  highest 
should  acquire  the  share  of  the  other, 
a,  reference  to  the  good-will  being 
stricken  out  of  the  draft.  Three  or 
four  years  after,  the  firm  was  dis- 
solved; one  of  the  two  adjoining 
stores  was  taken  by  each  partner, 
but  no  provision  was  made  as  to  the 
use  of  the  firm  name.  Plaintiff  then 
sought  to  restrain  the  defendant  from 
using  the  old  firm  name,  "  H.  Kot- 
tler &  Co."  Held,  that  the  defendant 
was  entitled  to  use  the  name.     It  is 


intimated,  also,  that  plaintiff  was  not 
entitled  to  use  the  sign  "  N.  Lepow, 
formerly  H.  Kottler  &  Co.,"  the 
word  "  f  ormerly "  being  in  small 
letters.  Stein  v.  National  Life  Assn., 
105  Ga.  821-1898;  32  S.  E.  615;  46 
L.  R.  A.  150.  Moore  v.  Eawson,  185 
Mass.  264-1904.  Where  a  manufac- 
turer of  shoes,  doing  business  under 
the  name  "  D.  G.  Rawson  &  Co."  en- 
tered into  a  partnership  agreement 
with  others  under  which  the  same 
business  was  to  be  carried  on  by  the 
new  firm  at  the  same  place  and  under 
the  same  name,  the  trade  name 
passed  to  the  firm  without  being 
specified. 

43b  Harrison  v.  Gardner,  2  Mad. 
198-219-1817.  This  is  the  doctrine 
of  Trego  v.  Hunt,  12  T.  L.  R,  SO- 
1S95.    See  note  34,  §  59,  infra. 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        119 

§  63.  Dissolution  by  Death  of  a  Partner. —  The  former  rule 
was  that,  on  the  death  of  a  partner,  the  right  to  use  a  firm 
name  and  the  title  to  it  pass  to  the  surviving  partners.44 
This  rule  was  doubted  in  Crawshay  v.  Colli?is,45  and  is  not  now 
regarded  as  law.  The  name  is  now  held  an  asset  of  the  com- 
pany in  which  the  estate  of  a  deceased  partner  may  partici- 
pate.40 

In  a  purchase  by  a  surviving  partner  of  the  rights  of  his 
deceased  partner  from  the  estate  of  that  partner,  the  family 
and  descendants  of  the  deceased  may  lose  the  right  to  use 
the  family  name  in  any  way  detrimental  to  the  rights  of  the 
surviving  partner  under  the  terms  of  the  sale.47 

Where,  on  the  death  of  a  partner,  all  assets  are  sold  at  auc- 
tion, a  purchaser  of  the  good-will  obtains  an  unrestricted 
right  to  use  the  firm  name,  because  such  name  is  inseparable 
from  the  good-will.48  In  the  case  of  a  purchase  of  the  partner- 


44  Lewis  v.  Langdon,  7  Simons  421- 
1835. 

40 15  Ves.  218-1808. 

48  Wedderburn  v.  Wedderbum,  22 
Beav.  84-1855;  Smith  v.  Everett,  27 
Beav.  446-1859;  Hall  v.  Barrows,  4 
De  G.  J.  &  S.  150-1863;  Dougherty 
v.  Van  Nostrand,  1  Hoff.  Ch.  (N.  Y.) 
68-1839;  Williams  v.  Wilson,  4 
Sandf.  Ch.  (N.  Y.)  379-1846;  Howe 
v.  Searing,  6  Bosw.  (N.  Y.)  354- 
1860;  Holden,  Admr.  v.  M'Makin,  1 
Pars.  Sel.  Cas.   (Pa.)  270-1847. 

"Hall  v.  Barrows,  4  De  G.  J.  & 
S.  150-1863.  Partnership  assets  in- 
clude the  good-will  and  the  right  to 
use  the  trade-mark,  and,  on  the  pur- 
chase of  all  the  partnership  assets 
by  a  surviving  partner,  from  the  es- 
tate of  a  deceased  partner  at  a  valu- 
ation, the  value  of  the  good-will  and 
trade-mark  should  be  included. 

48  Slater  v.  Slater,  175  N.  Y.  143- 
1903;  67  N.  E.  224;  61  L.  R.  A.  796. 
Hallett   v.    Cumston,  110   Mass.   29- 


1872.  Hallett  and  Cumston  were 
partners  up  to  1865,  when  Hallett 
sold  out  to  Cumston,  giving  him 
right  "  to  use  the  name  of  said  Hal- 
lett jointly  with  his  own  name,  in 
conducting  his  said  business,  but 
that  such  use  of  his  name  should 
give  the  plaintiff  no  rights  or  in- 
terest whatever  therein,  other  than 
those  named"  (id.  p.  30).  Hallett 
was  to  continue  three  years  as  a 
salesman  and  to  take  one-third  of 
the  net  profit.  In  1870  Cumston 
died;  defendant,  the  son  of  Cum- 
ston, was  then  notified,  as  executor 
of  Cumston's  will,  that  plaintiff  ter- 
minated his  agreement  with  Cumston 
and  forbade  the  use  of  his  (plain- 
tiff's) name.  Next  day  Cumston's 
son  wrote  Hallett  that  he  had  com- 
pleted arrangements  with  another  man 
called  Hallett  to  join  him  in  con- 
tinuing his  father's  business.  Held, 
by  agreement  with  Cumston,  senior, 
Hallett  conveyed  all  interest  in  the 


120 


Unfair  Business  Competition. 


ship  business  by  one  partner,  it  is  held  that  the  ex- 
clusive right  to  the  use  of  the  firm  name  passes  to  the  pur- 
chaser, although  no  express  mention  is  made  of  such  name  in 
the  agreement  of  dissolution.  The  purchaser  acquires  the. 
good-will  of  the  firm,  and  this  includes,  as  against  the  retiring 
partners,  the  exclusive  right  to  use  the  name  under  which  the 
firm  did  business.48 

Where  the  member  of  the  firm  dies  and  his  will  and  the 
partnership  agreement  contemplate  the  continuation  of  the 
business  under  the  former  name,  the  firm  name  cannot  be 
considered  as  an  asset  of  the  estate,  subject  to  sale  by  the 
executors  of  the  deceased,  but  is  a  part  of  the  property  of  the 
firm  and  often  the  most  important  part,  and  not  to  be  changed 
or  disposed  of  except  as  firm  property.50 


business  and  cannot  restrain  use  of 
trade-mark  "  Hallett  and  Cumston." 
The  agreement  terminated  at  Cum- 
ston's  death.  Cumston's  executors 
had  no  right  to  use  Hallett's  name 
without  his  consent.  They  had  right 
to  use  any  other  person's  name.  In- 
junction denied  because  there  was  no 
allegation  that  defendant  used  name 
Hallett  with  intent  to  represent  it  to 
be  the  name  of  the  plaintiff  and 
thereby  defraud  him. 

49  Merry  v.  Hoopes,  111  N.  Y.  415- 
1888;  18  N.  E.  714;  Menendez  v. 
Holt,  128  U.  S.  514-1888;  32  L.  ed. 
526;  9  Sup.  Ct.  143;  Listman  Mill 
Co.  v.  Wm.  Listman  Milling  Co.,  88 
Wis.  334-1894;  60  N.  W.  261;  Slater 
v.  Slat er,  175  N.  Y.  143-1903 ;  67  N. 
E.  224;  61  L.  R.  A.  796;  A.  G.  Fish 
v.  Fisk,  Clark  &  Flagg,  77  App.  Div. 
(N.  Y.)  83-1902;  79  N.  Y.  Supp.  37. 
Steinfeld  v.  National  Shirt  Waist 
Co.,  99  App.  Div.  (N.  Y.)  286-1904; 
90  N.  Y.  Supp.  964.  Plaintiffs  were 
successors  to  a  firm  doing  business 
under  the  name  "  National  Shirt 
Waist  Co.,"  and  were  doing  business 
under  that  name.     One  Broads  had 


sold  all  his  interest  in  the  earlier 
firm  to  a  party  who,  in  time,  as- 
signed to  plaintiffs;  no  express  men- 
tion being  made,  however,  of  the 
firm  or  trade  name.  Defendant  com- 
pany was  then  organized  under  the 
same  name  as  that  used  in  trade  by 
plaintiffs.  Broads  had  two,  and  his 
brother  ninety-seven  of  the  hundred 
shares  of  the  company.  It  was  al- 
leged that  defendant  had  taken  the 
name  for  the  purpose  of  misleading 
the  public,  that  confusion  had  in  fact 
resulted,  with  injury  to  plaintiff's 
business.  Held,  that  a  preliminary 
injunction  should  be  granted.  Where, 
upon  the  dissolution  of  a  firm,  one 
partner  purchases  the  business,  he  is 
exclusively  entitled  to  the  firm  name, 
even  though  not  dishonest  in  the 
agreement. 

60  Sohier  v.  Johnson,  111  Mass. 
238-1872.  Defendant  was  a  member 
of  the  firm  of  E.  A.  &  W.  Win- 
chester at  the  time  of  the  death  of 
the  senior  member,  William  P.  Win- 
chester. It  was  held,  in  view  of  the 
provision  of  the  articles  of  partner- 
ship and  of  the  will  of  William  P. 


Transfers  op  Trade  Names,  Signs,  Marks,  Etc.        121 


§  64.  Transfers  by  Descent  and  Rights  of  Descendants.— 

The  good-will  and  trade  names  of  a  business  which  pass  from 
its  owner  to  some  of  his  descendants,  by  devolution  of  law,  will 
be  protected  in  the  hands  of  the  descendants  if  they  continue 
the  business.  They  may  use  the  ancestor's  name  as  a  trade 
name,  because  in  so  doing  they  will  be  regarded  merely  as  car- 
rying on  the  business  carried  on  by  him.  The  point  to  be  con- 
sidered is  whether  their  use  of  the  name  can  be  reasonably 
regarded  as  indicating  anything  except  that  they  are  carrying 
on  the  business  of  the  ancestor,  or  that  the  goods  marked  with 
the  name  are  made  at  the  old  factory.51 


Winchester,  which  contemplated  the 
continuance  of  a  firm  under  the  old 
name,  that  the  firm  name  and  good- 
will of  the  business  could  not  be  con- 
sidered an  asset  of  the  estate,  sub- 
ject to  sale  by  the  executors  and  trus- 
tees, especially  after  defendant  in 
partnership  with  others,  had  for 
many  years  carried  on  the  business 
under  the  old  firm  name.  Slater  v. 
Slater,  175  N.  Y.  143-1903;  67  N.  E. 
224;  61  L.  R.  A.  796.  A  firm  name 
is  inseparable  from  the  good-will, 
and  the  unrestricted  right  to  use  it 
passes  to  one  who,  by  the  dissolution 
of  the  firm,  as  by  the  death  of  one 
of  the  partners,  purchases  the  assets 
of  the  firm,  including  the  good-will, 
whether  such  purchaser  be  a  surviv- 
ing partner  or  a  stranger.  In  this 
case,  in  an  action  for  an  accounting 
between  the  executor  of  the  deceased 
partner  of  J.  &  J.  Slater  against  the 
surviving  partner,  the  entire  assets 
of  the  firm  had  been  directed  to  be 
sold  at  auction.  The  question  thus 
arose  as  to  what  right  to  the  firm 
name  a  purchaser  (other  than  the 
surviving  partner)  would  acquire. 
Fisk  v.  Fish,  Clark  &  Flagg,  11  App. 
Div.  (N.  Y.)  83-1902;  79  N.  Y. 
Supp.    37    (1st    Sept.).      Plaintiffs 


were  administrators  of  the  last  sur- 
viving member  of  the  firm  of  Fisk, 
Clark  &  Flagg.  Held,  that  they  were 
entitled  to  an  injunction  against  the 
carrying  on  of  a  business  similar  to 
that  firm's-  by  defendants  under  a 
corporate  name  the  same  as  that  of 
the  firm,  since  the  good-will  of  the 
business  (though  not  the  name  itself) 
could  be  disposed  of  by  the  repre- 
sentatives of  the  last  surviving  mem- 
ber, and  the  purchaser  of  the  good- 
will would  be  entitled  to  hold  himself 
out  as  the  successor  to  the  business  of 
the  extinct  firm. 

"  Leather  Cloth  Co.  v.  American 
Leather  Cloth  Co.,  11  H.  L.  Cas.  523- 
1865.  Emerson  v.  Badger,  101  Mass. 
82-6-1869.  Judge  Gray:  "The 
original  inventor  of  the  razor  straps 
mentioned  in  the  bill,  and  the  owner 
and  designer  of  the  label  put  upon 
them  by  way  of  trade-mark,  was 
Charles  Emerson,  Sr.,  who  employed 
and  instructed  in  his  business  five  of 
his  nephews,  of  whom  Benjamin 
Badger,  the  father  of  this  defendant, 
was  the  eldest,  and  the  plaintiff  was 
the  third.  Said  Benjamin,  in  his 
uncle's  lifetime,  left  his  employment, 
and  continued,  with  his  consent  and 
permission,  but  on  his  own  account, 


122 


Unfair  Business  Competition. 


If  the  right  to  use  a  family  name  in  trade  has  been  trans- 
ferred to  one  who  derives  a  right  to  use  the  name  by  descent 
and  wishes  to  use  it  in  competition  with  him  who  has  purchased 
the  right  to  use  it,  he  must  accompany  his  use  of  it  with  such 
explanation  of  his  connection  with  the  name  as  will  prevent 
fraud,  and  the  explanations  "  must  accompany  the  use,  so  as  to 
give  the  antidote  with  the  bane."52  Children  of  a  decedent 
may  form  a  corporation  and  use  his  name  in  the  corporate 
name,  and  be  protected  in  so  doing  against  former  employees 
of  decedent  and  others  who  attempt  to  use  his  name  in  a 
similar  business.53 


to  manufacture  and  sell  such  straps 
and  to  use  the  same  label  thereon, 
and  was  succeeded  in  his  business  by 
his  son,  the  defendant.  The  uncle 
died  without  issue,  his  nephews  were 
among  his  heirs  at  law,  arid  his  busi- 
ness and  trade-mark  were  not  dis- 
posed of  by  himself  by  will  or  other- 
wise, nor  by  his  administrator  after 
his  decease.  The  plaintiff,  though 
bearing  the  same  name,  is  not  the 
original  Charles  Emerson,  and  has  no 
greater  right  than  the  defendant  to 
hold  himself  out  as  such,  or  to  use 
the  label  of  his  uncle.  The  label  used 
by  the  defendant  does  not  represent 
his  razor  straps  to  be  made  by  the 
plaintiff  or  by  any  person  of  the 
name  of  Charles  Emerson,  but  states 
with  exact  truth  the  relation  of  the 
defendant  to  the  original  inventor 
and  owner.  The  plaintiff,  therefore, 
fails  to  prove  either  any  infringement 
of  his  own  rights  or  any  wrongful 
act  of  the  defendant."  England  v. 
Downs,  6  Beav.  269-76-1842.  A 
widow  carried  on  the  business  of 
victualler  on  premises  leased  from 
year  to  year.  Before  marrying  again 
she  assigned  all  her  household  goods, 
stock  in  trade,  brewing  utensils,  and 
all  her  effects  —  thus  excluding  her 


husband  —  and  then  married.  "  Good- 
will in  a  case  of  this  sort,"  Lord 
Langdale  said,  "  is  the  chance  or 
probability  that  custom  will  be  had 
at  a  certain  place  of  business  in  con- 
sequence of  the  way  in  which  that 
business  has  been  previously  carried 
on.  *  *  *  I  must  own  my  opinion 
is,  that  the  good-will  belonged  to  the 
wife,  and  was  a  part  of  the  settled 
property,  as  annexed  and  incident 
to  the  things  which  were  comprised 
in  the  deed,  and  that  whether  the 
particular  interest  she  had  in  the 
leasehold  premises  was  distinctly 
comprised  in  the  deed  or  not." 

02  Herring-Hall-Marvin  Safe  Co.  v. 
Hall's  Safe  Co.,  208  U.  S.  554-59- 
1908. 

"  S.  Howes  Co.  v.  Howes  Grain 
Cleaner  Co.,  24  Misc.  (N.  Y.)  83- 
1898;  52  N.  Y.  Supp.  46S.  Upon 
the  death  of  Simeon  Howes,  well 
known  as  a  manufacturer  of  grain 
cleaners  and  similar  machinery,  his 
children  and  legatees  formed  a  corpo- 
ration under  the  name  of  the  "  S. 
Howes  Company "  to  continue  de- 
cedent's business;  this  corporation 
acquired  from  the  executors  the  as- 
sets, trade-marks  and  good-will  of  de- 
cedent's  busineess,   without   any  ex- 


Transfers  of  Trade  Names,  Signs,  Marks,  Etc.        123 


§  65.  Transfer  of  Secret  Formulae. —  As  to  the  law  re- 
lating to  transfers  of  secret  formulae  and  processes,  see  the 
chapters  on  Trade  Secrets  and  Interference  with  Contract. 

One  who  owns  such  a  secret  may  transfer  it  under  contract 
providing  that  it  be  kept  a  secret  by  the  person  buying  it,  and 
may  enjoin  a  breach  of  such  contract.  He  may  sell  the  same 
secret  to  various  persons  allowing  to  each  the  right  to  sell  the 
article  generally  or  in  a  prescribed  territory.54    See  §  221. 


press  mention  of  the  right  to  use  the 
name.  Former  employees  of  the  de- 
cedent then  organized  "  The  Howes 
Grain  Cleaner  Company  "  to  engage 
in  the  same  business.  Confusion  and 
mistakes  on  the  part  of  customers 
were  shown  to  have  resulted.  Held, 
that  defendant  should  be  enjoined 
from  using  a  corporate  name  of 
which  "  Howes  "  was  a  part.  Mar- 
shall v.  PinkKam,  52  Wis.  572-1881; 
9  N.  W.  615.  Samuel  Marshall,  hav- 
ing a  recipe  for  a  liniment  appar- 
ently not  originated  by  him  or  pat- 
ented, allowed  various  members  of 
his  family  to  make  and  sell  it,  a 
label  being  attached  containing  the 
words  "  Old  Dr.  S.  Marshall's  Cele- 
brated Liniment "  and  other  words, 
and  the  figure  of  a  horse's  head. 
After  his  death  his  widow  continued 
for  a  time  to  make  and  sell  the  lini- 
ment, and  then  sold  all  her  material 
to  the  plaintiff,  one  of  Samuel  Mar- 
shall's sons.  Held,  that  plaintiff  had 
no  exclusive  right  to  make  and  sell 
the  liniment,  or  use  the  old  label  and 
the  trade  name,  but  that  the  other 
children  had  similar  rights. 


MPark  &  Co.  v.  Hartman,  187  Mass. 
144-1905,  72  N.  E.  839,  153  Fed.  24; 
Fowl  v.  Park,  131  U.  S.  88-1889,  9  S. 
Ct.  658,  33  L.  ed.  67;  In  Chadwick  v. 
Covell,  151  Mass.  190-1890;  23  N.  E. 
1068;  6  L.  R.  A.  839.  The  adminis- 
tratrix of  Dr.  Spencer,  who  had 
made  certain  medicines  according  to 
secret  formula?  and  under  distinctive 
names,  made  what  is  assumed  to 
have  been  a  valid  transfer  to  the 
plaintiff  of  the  formula?  for  these 
medicines  with  the  trade-marks  and 
labels.  Afterward  an  administrator 
de  bonis  non  assumed  to  convey  to 
defendant  the  recipes  and  trade- 
marks for  these  medicines,  except 
such  as  might  have  been  already 
granted.  Defendant  then  made  and 
sold  the  medicines,  with  labels  simi- 
lar to  those  used  by  Dr.  Spencer. 
Held,  that  he  was  entitled  to  do  so; 
that  both  plaintiff  and  defendant 
could  use  the  formula?,  as  well  as  the 
trade  names,  which  were  not  identi- 
fied with  any  particular  place  of 
manufacture,  so  that  defendant's  use 
of  them  did  not  tend  to  deceive  the 
public  any  more  than  plaintiff's. 


CHAPTER  VI. 

Family  Names  or  Surnames,  as  Trade  Names. 

Section  66.  Nature  of  the  right  in  one's  own  name. 

67.  What  constitutes  passing  off  by  use  of  surname. 

68.  Rulings  of  equity  courts  directing  use  of  explanatory  words 

with  defendant's  name. 

69.  Acquired  generic  or  secondary  meaning  of  names. 

70.  Surnames  which  by  usage  become  abstract  names  of  objects. 

71.  Priority  in  use  not  resulting  in  secondary  meaning. 

72.  Surnames  used  as  abbreviations. 

73.  Names  made  up  of  surnames  with  other  words  or  symbols. 

74.  Surnames  acquired  otherwise  than  by  descent. 

75.  Voluntary  change  of  personal  name. 

76.  Rights  acquired  by  him  who  first  uses  a  surname  in  business. 

77.  Family  names  as  corporate  names. 

78.  Rights  of  descendents  to  the  family  name  as  used  in  business 

by  an  ancestor. 

79.  Summary. 

"  Similarity,  not  identity,  is  the  usual  recourse  where  one 
party  seeks  to  benefit  himself  by  the  good  name  of  another."  * 

The  attitude  of  the  courts  toward  questions  arising  in  trade 
as  to  family  names  will  be  made  clearer  by  a  study  of  the  pro- 
tection equity  is  now  giving  to  various  other  personal  rights. 
The  question  of  personal  rights  is  a  far  different  question  now 
from  what  it  was  a  century  ago.  To  these  changed  conditions 
equity  must  and  does  adapt  its  remedies,  often  varying  its 
method  of  relief,  while  never  changing  its  few  rules  or  curtail- 
ing its  powers  by  specific  limitation  or  definition.    See  §  20. 

A  family  name  or  surname  may  be  very  valuable  quite  apart 
from  any  known  personality,  and  although  it  does  not  desig- 
nate any  specific  article,  as,  for  instance,  the  name  "  Hall  ': 
in  the  safe  trade.  And  this  is  so  as  an  advertisement,  even 
when  divorced  from  any  idea  of  succession  from  a  predecessor 
known  under  that  name.  This  value  arises  from  long  associa- 
tion with  superior  quality.2 

1  Celluloid    Mfg.    Co.    v.    Cellonite  a  Donnell    v.    Herring-Hall-Marvin 

Mfg.  Co.,  32  Fed.  97-1887.  Safe  Co.,  208  U.  S.  267-72-1908. 

[124] 


Family  Names  or  Surnames,  as  Trade  Names.  125 

§  66.  Nature  of  the  Right  in  One's  Own  Name. —  A  man 

has  rights  in  his  family  or  personal  name.  Just  what  is  their 
extent  is  disputed,  but  rights  he  most  assuredly  has,  and  these 
rights  are  such  as  usually  will  be  protected  by  an  equity  court. 
The  general  impression  is  prevalent  that  a  man's  name,  like  his 
house,  is  particularly  his  own;  and  an  Englishman  or  Ameri- 
can is  quick  to  resent  any  interference  with  such  rights  by  the 
courts.  The  common  law  has  taught  them  that  "  every  man's 
house  is  called  his  castle.  Why?  Because  it  is  surrounded  by 
a  moat  or  defended  wall  ?  No.  It  may  be  a  straw-built  hut : 
the  wind  may  whistle  through  it,  the  rain  may  enter  it,  but  the 
king  cannot."3  And  his  name  is  more  dear  to  him  than  his 
house. 

It  is  only  in  recent  times  that  the  necessity  for  protection 
of  one's  name  has  become  of  special  importance.  Formerly, 
libel  and  slander  afforded  about  the  only  ways  by  which 
one  could  injure  another's  name.  Now,  through  the  multipli- 
cation of  advertising  methods  and  through  the  present 
means  of  reaching  the  public  ear  and  catching  the  public 
eye,  the  instruments  at  the  hand  of  a  person  disposed  to  act 
fraudulently,  by  which  he  may  injure  his  competitior's  good 
name  and  business  reputation,  are  legion.  During  the  last 
twenty  years,  the  courts  have  been  developing  this  body  of  law, 
which  has  arisen  because  of  numerous  cases  in  which  appli- 
cation has  been  made  to  enjoin  such  unfair  methods  of  trade : 
and  much  of  this  law  has  been  laid  down  in  cases  relating  to 
family  or  personal  names  used  as  trade  names. 

§  67.  What  Constitutes  Passing  Off  by  Use  of  Surname. — 
The  fundamental  principle  is  that  a  man  has  an  unqualified 
right  to  use  his  own  name  as  he  will.  It  includes  the  right  to 
make  out  of  it  a  trade  name  for  use  in  his  business,  which  shall 
be  his  alone  and  transferable  to  his  children  after  him,  or  which 
he  may  sell  to  another  for  value.  As  may  be  easily  imagined, 
many  vexing  questions  arise  as  to  the  rights  inherent  in  and 
growing  out  of  these  names  so  used.  As  said  above,  every  man 
has  a  right  to  the  use  of  his  own  name.  That  is  the  first  prin- 
ciple. To  this  the  law  of  unfair  competition  has  added  another. 
No  man  may  use  even  his  own  name  in  such  manner  as  to  in- 

8  Stephens   Dig. '  Evidence    Introd.    p.  23. 


126 


Unfair  Business  Competition. 


jure  another  unfairly  or  fraudulently  in  his  business.  "  While 
it  is  true  that  every  man  has  a  right  to  use  his  name  in  his  own 
business,  it  is  also  true  that  he  has  no  right  to  use  it  for  the 
purpose  of  stealing  the  good- will  of  his  neighbor's  business, 
nor  to  commit  a  fraud  upon  his  neighbor,  nor  to  trespass  upon 
his  neighbor's  rights  or  property;  and  while  it  is  true  that 
every  man  has  a  right  to  use  white  paper,  it  is  also  true  that  he 
has  no  right  to  use  it  for  making  counterfeit  money,  nor  to 
commit  a  forgery. ' ' 4 

First  then,  as  to  the  general  propositions.  Can  a  court  under 
any  circumstances  prevent  a  person  from  using  his  own  name? 
Lord  Colton  says  that  it  cannot  be  done,  without  intent  on  the 
part  of  the  person  offending  to  pass  off  himself  as  some  other 
person.  "  In  my  opinion  the  court  cannot  stop  a  man  from 
carrying  on  his  business  in  his  own  name,  although  it  may  be 
the  name  of  a  better-known  manufacturer,  when  he  does  noth- 
ing at  all  in  any  way  to  try  and  represent  that  he  is  that 
better-known  and  successful  manufacturer. ' ' 5  This  view  was 
held  by  the  Connecticut  court  as  late  as  1885.  The  cases  of 
Croft  v.  Day?  and  Holloway  v.  Holloivay,7  both  limited  the 
rule,  the  court  feeling  that  its  duty  to  prevent  deceit  was 
stronger  than  the  right  of  the  offending  party  to  an  unre- 
strained use  of  his  particular  name.  In  the  same  breath,  the 
court  disclaimed  any  attempt  to  abridge  the  right  of  the  defend- 
ant and  declares  its  right  and  duty  to  prevent  him  from  com- 
mitting fraud.8 


4  Garrett  v.  T.  H.  Garrett  &  Co.,  78 
Fed.  472-1896;  24  C.  C.  A.  173,  at 
p.  478. 

6  Turton  v.  Turton,  42  Ch.  Div. 
128-1889,  at  p.  143. 

'  7  Beav.  84-1843. 

7 13  Beav.  209-1850. 

"Croft  v.  Day,  7  Beav.  84-1843. 
Executors  of  Day  sought  to  restrain 
nephew  of  Day  from  making  blacking 
under  label  similar  to  those  used  by 
Day  &  Martin.  "His  (plaintiff's) 
right  is  to  be  protected  against 
fraud,  and  fraud  may  be  practiced 
against   him   by   means    of   a   name, 


though  the  person  practicing  it  may 
have  a  perfect  right  to  use  that  name, 
provided  he  does  not  accompany  the 
use  of  it  with  such  other  circum- 
stances as  to  effect  a  fraud  upon 
others  "  (id.  p.  88).  "  He  has  a  right 
to  carry  on  the  business  of  a  blacking 
manufacturer  honestly  and  fairly;  he 
has  a  right  to  the  use  of  his  own 
name.  I  will  not  do  anything  to  de- 
bar him  from  the  use  of  that,  or  any 
other  name  calculated  to  benefit  him- 
self in  an  honest  way;  but  I  must 
prevent  him  from  using  it  in  such  a 
way  as  to  deceive  and  defraud  the 


Family  Names  or  Surnames,  as  Trade  Names. 


127 


In  1853,  Burgess  v.  Burgess9  was  decided.  This  case  held 
that  every  man  had  a  full  right  to  use  his  own  name.  Father 
and  grandfather  had  sold  "  Burgess's  Essence  of  Anchovies  " 
since  before  1800.  The  son  then  opened  a  competing  business, 
and  called  his  goods  also  "  Burgess's  Essence  of  Anchovies." 
His  right  so  to  do  was  upheld,  Lord  Justice  Bruce  saying: 
"All  the  Queen's  subjects  have  a  right,  if  they  will,  to  manu- 
facture and  sell  pickles  and  sauces,  and  not  the  less  that  their 
fathers  have  done  so  before  them.  All  the  Queen's  subjects 
have  a  right  to  sell  these  articles  in  their  own  names,  and  not 
the  less  so  that  they  bear  the  same  name  as  their  fathers.10 
*  *  *  No  man  can  have  any  right  to  represent  his 
goods  as  the  goods  of  another  person,  but  in  applications  of 
this  kind  it  must  be  made  out  that  the  defendant  is  selling 
his  own  goods  as  the  goods  of  another.  When  a  person  is 
selling  goods  under  a  particular  name,  and  another  person,  not 
having  that  name,  is  using  it,  it  may  be  presumed  that  he  so 
uses  it  to  represent  the  goods  sold  by  him  as  the  goods  of 
the  persons  whose  name  he  uses;  but  where  the  defendant 
sells  goods  under  his  own  name,  and  it  happens  that  the  plain- 
tiff has  the  same  name,  it  does  not  follow  that  the  defendant 
is  selling  his  goods  as  the  goods  of  the  plaintiff.    It  is  a  ques- 


public,  and  obtain  for  himself,  at  the 
expense  of  the  plaintiffs,  an  undue  or 
improper  advantage"  (id.  p.  90). 
Cited  with  approval  in  Brown  Chemi- 
cal Co.  v.  Meyer,  139  U.  S.  540-1890; 
35  L.  ed.  247;  11  Sup.  Ct.  625. 
Holloway  v.  Holloway,  13  Beav.  209- 
1850.  Thomas  Holloway  made  and 
sold  pills,  etc.,  at  244  Strand  as  "  Hol- 
loway's Pills  and  Ointment."  Henry 
Holloway,  a  brother  of  the  plaintiff, 
then  sold  pills  at  210  Strand  as  "  H. 
Holloway's  pills  and  ointment,"  using 
boxes  similar  to  those  of  plaintiff,  and 
copying  the  latter's  labels  and  wrap- 
pers. The  evidence  disclosed  an  in- 
tention to  profit  by  this  similarity. 
Held,  Henry  had  no  right  to  deceive 
the  public  and  make  them  believe  he 


was  selling  Thomas'  goods.  "  The 
defendant's  name  being  Holloway,  he 
had  a  right  to  constitute  himself  ven- 
dor of  Holloway's  pills  and  ointment, 
and  I  do  not  intend  to  say  anything 
tending  to  abridge  any  such  right. 
But  he  has  no  right  to  do  so  with 
such  additions  to  his  own  name  as  to 
deceive  the  public  and  make  them  be- 
lieve that  he  is  selling  the  plaintiff's 
pills  and  ointment"  (id.  p.  213).  Fol- 
lowed in  Brown  Chemical  Co.  v. 
Meyer,  139  U.  S.  540-1890 ;  35  L.  ed. 
247;  11  Sup.  Ct.  625;  and  McLean  v. 
Fleming,  96  U.  S.  245-1877;  24  L. 
ed.  828. 

'  3  De  G.  M.  &  G.  896-903. 

10  See  also  Bodgers  v.  Nowill,  6 
Hare  325-1846. 


128 


Unfair  Business  Competition. 


tion  of  evidence  in  each  case,  whether  there  is  false  represen- 
tation or  not  "  (id.  p.  904-5). 

This  case  has  been  widely  cited  and  repeatedly  distinguished 
and  limited  by  the  courts  of  both  England  and  this  country. 
For  instance,  in  Massam  v.  Horley's  Cattle  Food  Co.,11  the 
court  said :  "  Now  Burgess  v.  Burgess  has  been  very  much  mis- 
understood if  it  has  been  understood  to  decide  that  anybody 
can  always  use  his  own  name,  as  a  description  of  an  article, 
whatever  may  be  the  consequence  of  it,  or  whatever  may  be  the 
motive  for  doing  it,  or  whatever  may  be  the  result  of  it." 

Lord  Turner,  in  a  concurring  opinion  in  the  Burgess  case 
itself,  laid  down  important  limitations  on  the  right  to  use  one's 
own  name  as  a  trade  name. 

Lord  Esher  in  Turton  v.  Turton,  a  case  decided  in  1889, 
thought  that,  in  addition  to  using  the  same  family  name  that 
was  in  use  by  some  one  already  established  in  business  under 
that  name,  one  must  also  do  other  acts  tending  to  create  con- 
fusion in  the  mind  of  the  public,  in  order  to  be  held  guilty  of 
unfair  competition.12 


11 14  Ch.  Div.  748-52-1880. 

12  Turton  v.  Turton,  42  Ch.  Div. 
128-1889.  The  names  in  question 
were  "  Thomas  Turton  &  Sons  "  and 
"  John  Turton  &  Sons."  Lord  Esher, 
M.  R.,  held  in  substance  as  follows: 
"  Now  it  is  not  proved  against  the 
defendant,  that  he  did  anything  in 
the  way  of  his  trade  which  tended  to 
give  any  other  meaning  to  the  name 
in  which  he  carried  on  his  business, 
or  which  could  give  any  other  mean- 
ing to  it,  than  merely  the  fact  that 
he  did  carry  on  business,  and  was  in 
partnership  with  his  sons.  He  had 
not  done  anything  with  the  intent  or 
for  the  purpose  of  making  the  use 
of  his  simple  name  look  as  if  his 
name  was  the  name  of  the  plaintiffs. 
In  some  cases,  besides  using  the 
name,  parties  have,  to  use  what  I 
think  is  a  happy  phrase  of  my 
brother     Cotton's,     '  garnished     that 


use,'  that  is  they  have  done  things 
besides  using  the  name,  in  order  that 
the  use  of  that  name  might  look  as  if 
it  were  being  used  by  the  old  firm  " 
(id.  p.  134).  "I  assume  that  the 
names  are  sufficiently  alike  to  cause 
blunders  in  trade;  but  they  are 
blunders  of  the  people  who  make  the 
blunders.  Has  the  defendant  done 
anything  so  far  to  cause  these 
blunders  even  though  he  did  not  in- 
tend it,  which  entitles  the  court  to 
stop  him  from  doing  what  he  is  do- 
ing? He  is  simply  stating  that  he  is 
carrying  on  business  with  his  two 
sons  as  partners.  I  say  that  is 
the  accurate  and  exact  truth  of  what 
he  is  doing.  I  will  assume  for  the 
moment  that  it  is  pointed  out  to  him 
what  he  is  doing,  that  blunders  will 
occur  in  the  business  a.nd  that  the 
results  which  are  complained  of  will 
happen.    Is  there  anything  dishonest, 


Family  Names  or  Surnames,  as  Trade  Names. 


129 


The  Turton  case  emphasizes  two  points,  viz.,  that  the  defend- 
ant cannot  be  held  accountable  for  the  stupidity  or  carelessness 
of  heedless  purchasers  who  deal  with  the  plaintiff  or  with  him ; 
and  that  if,  in  the  name  the  defendant  has  used,  he  has  stated 
the  exact  truth,  he  is  not  responsible  for  injury  suffered  by  the 
plaintiff.  Both  these  questions  are  discussed  later  on  under  the 
head  of  Defenses. 

This  opinion  assumes  that  the  contention  is  made  that,  if 
two  persons  of  the  same  name  desire  to  enter  the  same  busi- 
ness, one  must  "  discard  his  own  name  and  take  a  false  one." 
No  one  now  contends  that  fair  dealing  demands  this;  but  it 
does  demand  that  if  these  two  namesakes  are  to  compete,  while 
neither  is  forbidden  to  use  their  common  name,  neither  must 


—  is  there  anything  wrong  morally, 
in  any,  even  in  the  strictest  sense,  in 
a  man  using  his  own  name,  or  stat- 
ing that  he  is  carrying  on  business 
exactly  as  he  is  carrying  it  on?  Is 
there  anything  wrong  in  his  continu- 
ing to  do  so,  because  people  make 
blunders,  and  even,  if  you  please,  be- 
cause they  make  probable  blunders'? 
What  is  there  wrong  in  what  he  is 
doing?  Now  it  is  said  that  the 
plaintiffs  have  a  trade  name  and  a 
property  in  their  name.  I  doubt 
about  property,  though  they  have 
this  right :  That  no  man  shall  wrong- 
fully interfere  with  their  name.  But 
they  have  no  right  to  say  that  a  man 
may  not  rightly  use  his  own  name. 
I  cannot  conceive  that  the  law  is  such. 
If  the  law  were  such,  the  law  would 
be  most  extraordinary  and,  to  my 
mind,  most  unjust,  to  prevent  a 
man's  using  his  own  name.  And  I 
must  say  this,  that  all  the  arguments 
which  have  been  used  in  this  case 
would  have  been  equally  applicable  if 
there  had  been  nothing  about  sons, 
and  if  one  man  were  carrying  on 
business  as  Thomas  Turton  under  the 
circumstances  in  which  Thomas  Tur- 

9 


ton  &  Sons  were  carrying  on  their 
business,  and  another  man  named 
John  Turton  were  to  come  and  carry 
en  his  business  simply  in  his  own 
name.  Therefore  the  proposition 
goes  to  this  length :  that  if  one  man 
is  in  business  and  has  so  carried  on 
his  business,  that  his  name  has  be- 
come a  value  in  the  market,  another 
man  must  not  use  his  own  name.  If 
that  other  man  comes  and  carries  on 
business  he  must  discard  his  own 
name  and  take  a  false  name.  The 
proposition  seems  to  me  so  monstrous, 
that  the  statement  of  it  carries  its 
own  refutation.  Therefore,  upon 
principle,  I  should  say  it  is  perfectly 
clear  that  if  all  that  a  man  does  is  to 
carry  on  the  same  business,  and  to 
state  how  he  is  carrying  it  on,  that 
statement  being  the  simple  truth,  and 
he  does  nothing  more  with  regard  to 
the  respective  names,  he  is  doing  no 
wrong.  He  is  doing  what  he  has  an 
absolute  right  by  the  law  of  England 
to  do,  and  you  cannot  restrain  a  man 
from  doing  that  which  he  has  an 
absolute  right  by  the  law  of  England 
to  do"  (at  p.  135-36). 


130  Unfair  Business  Competition. 

do  any  act  that  will  create  confusion  which  will  result  in  injury 
to  the  other. 

In  1875,  twenty-two  years  after  Burgess  v.  Burgess,  the  New 
York  Court  of  Appeals  decided  Meneely  v.  Meneely,12  which 
case  held,  by  Andrews,  J.,  "  that  any  person  may  use  in  his 
business  his  family  name,  provided  he  uses  it  honestly  and 
without  artifice  or  deception,  although  the  business  he  carries 
on  is  the  same  as  the  business  of  another  person  of  the  same 
name  previously  established,  which  has  become  known  under 
that  name  to  the  public,  and  although  it  may  appear  that  the 
repetition  of  that  name  in  connection  with  the  new  business  of 
the  same  kind,  may  produce  confusion  and  subject  the  other 
party  to  pecuniary  injury.  The  right  of  a  person  to  use  his 
family  name  in  his  business  is  regarded  as  a  natural  right  of 
which  he  cannot  be  deprived,  by  reason  simply  of  priority  of 
use  by  another  of  the  same  name." 

This  doctrine  as  laid  down  in  Meneely  v.  Meneely,  was  cited 
with  approval  in  C.  S.  Higgins  Co.  v.  Higgins  Soap  Co.,14,  where 
the  court  said :  ' '  The  right  of  a  man  to  use  his  own  name  in 
his  own  business  the  law  protects,  even  when  such  use  is  in- 
jurious to  another  who  has  established  a  prior  business  of  the 
same  kind  and  gained  a  reputation  which  goes  with  the  name. ' ' 

§  68.  Rulings  of  Equity  Courts  Directing  Use  of  Explan- 
atory Words  with  Defendants'  Name. —  The  rule  as  it  exists 
to-day  in  the  conservative  jurisdictions  is  stated  by  the  Circuit 
Court  of  Appeals  in  Wychoff,  Seamans  &  Benedict  v.  Howe 
Scale  Co.,15  as  follows :  "  No  one  may  be  excluded  from  taking 
up  whatever  business  he  chooses  by  the  circumstance  that 
someone  else  of  the  same  name  has  made  a  reputation  in  it;  nor 
may  he  be  required  to  conduct  such  business  under  an  alias,  al- 
though the  conducting  of  it  under  his  own  name  may  produce 
a  confusion  in  the  public  mind  as  to  the  identity  of  goods,  which 
no  '  precaution  or  indication  '  of  his  can  effectually  prevent. 
It  is  through  no  fault  of  his  that  his  name  happens  to  be  the 
same  as  that  of  some  other  man,  who  has  already  impressed  his 

"62  N.  Y.  427-67-1875.  15122  Fed.  348-51-1903;  58  C.  C. 

"144  N.  Y.  462-68-1895;  39  N.  E.      A.  510. 
490;  27  L.  R.  A.  42. 


Family  Names  or  Surnames,  as  Trade  Names.  131 

personality  on  some  particular  industry.  All  that  is  required 
of  him  is  that  he  shall  use  reasonable  precautions  to  prevent 
confusion ;  that  he  shall  refrain  from  any  affirmative  act  which 
may  produce  it.  Thus  doing  and  thus  refraining,  he  may  do 
business  under  the  name  that  came  to  him  without  his  choice, 
and  may  call  his  goods  by  it,  if  he  pleases." 

There  is,  however,  something  abhorrent  to  justice  and  com- 
mon sense  in  allowing  one  who  has  built  up  a  profitable  busi- 
ness to  suffer  severe  loss  of  money  and  trade,  because  another 
who  happens  to  enter  the  business  later  has  been  given  the' 
same  name  as  he.  Such  an  idea  is  opposed  to  the  American 
and  English  idea  of  fair  play.  The  courts  have  experienced 
this  feeling  and  have  in  numerous  instances  tried  to  prevent 
the  injury,  at  the  same  time  trying  to  uphold  the  unqualified 
right  of  the  defendant  to  the  use  of  his  own  name,  going  even, 
farther  than  the  court  went  in  Wyckoff  v.  Howe  Scale  Co.y 
supra.  In  recent  years  it  has  been  common  for  the  courts  to 
dispose  of  cases  where  a  common  family  name  was  being  used 
by  defendant  to  the  injury  of  plaintiff,  by  allowing  the  defend- 
ant to  use  his  name,  but  only  in  such  ways  as  would  not  give 
occasion  for  purchasers  being  deceived  into  thinking  the  goods 
on  which  it  appeared  were  those  of  the  plaintiff,  and  thus  giv- 
ing relief  to  the  plaintiff  without  forbidding  anyone  to  use  his 
own  name.  In  other  instances  the  court  has  ordered  that  the 
defendant  use  his  full  name  instead  of  merely  his  surname, 
as  where  two  ' '  Hoff s  ' '  manufactured  malt  extract,  Leopold, 
being  later  in  beginning  business  than  Johann,  was  ordered  to 
prefix  his  first  name  to  all  his  labels.16 

18  Tarrant  &   Co.  v.  Johann  Hoff,  Germany,   using  the   words,   '  Hoff's 

76  Fed.  959-1896 ;  22  C.  C.  A.  644.  Malt  Extract '  on  its  labels  and  ad- 

"  Complainant  acquired  the  right  to  vertisements,  affixing  also  a  perpen- 

manuf acture  and  sell  in  the  United  dicular  side  label,  '  Manufactured  by 

States  <  Johann  Hoff's  Malt  Extract '  Leopold  Hoff.'    Held,  that  defendant 

under  labels  and  trade-marks  used  in  should   be   enjoined  from  using  the 

Germany  for  many  years,  and  which  words  '  Hoff's  Malt  Extract,'  unless 

entered    into    commerce    under    the  preceded  by  the  word  '  Leopold,'  and 

name    '  Johann    Hoff's '    or    simply  that  the  perpendicular  label  was  in- 

1  Hoff's '  extract.     Defendant  became  sufficient"  (head-note).     Royal  Bak- 

the  selling  agent  for  a  malt  extract  ing  Potoder  Co.  v.  Royal,  122  Fed. 

manufactured    by   Leopold    Hoff   in  337-1903;  58  C.  C.  A.  499-506.  "Now 


132  Unfair  Business  Competition. 

A  very  good  illustration  of  the  present  attitude  of  the  courts 
is  found  in  the  cases  brought  by  the  Walter  Baker  Chocolate 
Co.  against  various  persons  by  the  name  of  Baker,  who  have 
set  up  in  the  chocolate  business  from  time  to  time.  The  follow- 
ing summary  is  taken,  in  part,  from  the  Trade-Mark  Bulletin, 
for  1905.  The  business  of  Walter  Baker  &  Co.  was  begun  in 
1780,  at  Dorchester,  Mass.  For  more  than  fifty  years  it  had 
been  conducted  under  its  present  name.  In  1894,  William  H. 
Baker,  of  Winchester,  Va.,  began  to  market  chocolate  put  up 
and  labeled  with  the  name  "  W.  H.  Baker  &  Co.,"  so  as  to 
cause  his  goods  to  be  called  for,  sold  and  accepted  as  the  goods 
of  "  Walter  Baker  &  Co.,"  whose  goods  were  marked  "  W. 
Baker  &  Co.,"  thereupon,  Walter  Baker  sued  William  H. 
Baker,  and  his  New  York  agent,  Sanders,  to  enjoin  them  from 
using  the  name  "  Baker."  In  the  suit  against  Baker,  the  Cir- 
cuit Court  in  the  Western  District  of  Virginia,17  while  refus- 
ing to  enjoin  the  defendant  from  using  his  own  name,  enjoined 
him  from  using  the  name  "  Baker  "  alone  or  in  connection 
with  the  designation  "  &  Co."  and  required  him  to  use  it  in 
some  distinctive  manner. 

In  the  suit  against  Sanders  in  the  southern  district  of  New 
York,  an  injunction  was  granted  which  specified  the  manner  in 
which  the  goods  in  controversy  should  be  marked,  and  required 
the  defendant  to  place  upon  his  packages  in  prominent  type  the 
words,  "  W.  H.  Baker  is  distinct  from  and  has  no  connection 
with  the  old  chocolate  manufactory  of  Walter  Baker  &  Com- 
pany. ' ' ll8 

The  next  suit  was  brought  by  Walter  Baker  &  Co.  against 
William  P.  Baker,  of  New  York,  and  restrained  him  from  using 

If  defendant  did  not  bear  the  family  of  the  benefits  resulting  from  the  de- 
name  of  '  Royal '  there  would  not  be  mand  for  the  Royal  baking  powder 
the  slightest  doubt  but  that  his  use  of  made  and  sold  by  the  complainant " 
the  word  'Royal'  in  connection  with  (id.  p.  343).  The  defendant  was  or- 
a  baking  powder  made  and  sold  by  dered  to  distinguish  his  goods  from 
himself  would  be  absolutely  pro-  those  of  complainant,  and  make  his 
hibited,  on  the  ground  that  the  use  name  inconspicuous, 
•of  so  arbitrary  and  meaningless  a  1T  Walter  Baker  &  Co.  v.  Baker,  11 
word    applied   to    a   baking    powder  Fed.  181-1896. 

-could  only  be  with  the  dishonest  in-  ,8  Walter  Baker  &  Co.  v.  Sanders, 

tent  to  appropriate  to  himself  some  80  Fed.  889-1897. 


Family  Names  or  Surnames,  as  Trade  Names.  133 

the  name  "  Baker  "  alone,  in  the  sale  of  chocolate,  or  from 
using  it  with  the  initial  "  W."  only,  but  providing  that  he 
might  use  his  name  in  full,  "  William  P.  Baker  "  or  "  William 
Phillips  Baker  "  and  might  indicate  in  appropriate  language 
upon  the  packages  of  his  goods  that  they  were  made  and  pre- 
pared, or  sold  by  William  P.  Baker,  of  New  York."  19 

In  the  next  series  of  two  cases,  William  H.  Baker,  of  Win- 
chester, Va.,  appeared  as  complainant.  It  appeared  that  one 
William  H.  Baker,  of  Syracuse,  N.  Y.,  had  now  begun  to  trade 
upon  the  reputation  of  the  former  infringer,  William  H.  Baker, 
of  Winchester,  Va.,  and  was  using  upon  his  packages  the  same 
form  of  marking  which  the  court  had  required  the  latter  dealer 
to  place  upon  his,  to  wit,  "  Wm.  H.  Baker  is  distinct  from  the 
old  chocolate  manufactory  of  Walter  Baker  &  Co.,"  thereby 
making  it  appear  that  he  was  the  "  William  H.  Baker  "  who 
had  been  enjoined  at  the  suit  of  Walter  Baker  &  Co.  There- 
upon, William  H.  Baker,  of  Winchester,  Va.,  brought  suits 
against  William  H.  Baker,  of  Syracuse,  and  also  against  San- 
ders, now  the  agent  of  the  latter,  to  compel  them  to  desist  from 
the  use  of  this  marking.  In  the  suit  against  Sanders  such 
injunction  was  granted,  and  also  an  injunction  requiring  the 
defendant  to  desist  from  the  use  of  the  name  in  the  form  "  W. 
H.  Baker,"  or  "  Wm.  H.  Baker,"  but  permitted  him  to  use  the 
full  name,  "  William  H.  Baker  "  in  connection  with  the  word. 
"  Syracuse  "  when  the  same  were  printed  in  type  of  sufficient 
prominence.20  In  the  suit  against  Baker,  of  Syracuse,  a  similar 
decree  was  made.21 

In  the  latest  of  the  series,  Walter  Baker  &  Co.,  as  complain- 
ants, sought  to  restrain  the  defendant,  Slack,  a  retail  grocer,  of 
Chicago,  from  advertising  the  goods  of  William  H.  Baker,  of 
Winchester,  Va.,  as  "  Baker's  Chocolate  "  and  "  Baker's 
Cocoa  "  and  from  selling  them  to  customers  who  asked  for 
"  Baker's  Chocolate  "  or  "  Baker's  Cocoa." 

The  relief  awarded  was  an  injunction  to  prevent  the  defend- 
ant from  advertising,  selling  or  causing  to  be  sold  any  choco- 

"  Walter  Baker  &  Co.  v.  Baker,  87  "  Baker  v.  Baker,  115   Fed.   297- 

Fed.  209-1898.  1902  (C.  C.  A.  2d  Cir.). 

20  Baker  v.  Sanders,  97  Fed.  948- 
1899  (C.  C.  E.  D.  Pa.). 


134 


Unfair  Business  Competition. 


late  or  cocoa  other  than  that  of  the  complainant  as  or  under  the 
names  "  Baker's  Chocolate  "  or  "  Baker's  Cocoa,"  and  from 
using  the  name  "  Baker  "  alone  in  any  way  whatever  in  con- 
nection with  the  advertisement  or  sale  of  chocolate  or  cocoa 
other  than  that  of  Walter  Baker  &  Co.,  or  in  any  way  so  as  to 
indicate  that  the  goods  of  the  Virginia  manufacturer  were 
"  Baker's  Chocolate  "  or  "  Baker's  Cocoa."22 

Another  good  illustration  is  found  in  the  Rogers  cases.  The 
name  Rogers  has  come  to  be  associated  in  a  peculiar  way  with 
the  manufacture  of  silver.  The  business  was  started  in  1872 
by  Rogers  Brothers,  who  stamped  their  goods  "  Win.  Rogers 
Manufacturing  Co."  and  "  Wm.  Rogers  &  Son."  Various 
persons  who  bore  the  name  "  Rogers  "  have,  from  time  to 
time,  set  up  in  the  silver  business,  under  the  name  of 
"  Rogers,"  only  to  be  curtailed  and  limited  by  the  courts  in 
the  use  of  the  name. 

In  1883,  George  Rogers,  a  lawyer,  and  others  started  the 
"  Rogers  Manufacturing  Co."  and  sold  silver  as  "  6  Rogers 
A-l."  Held,  defendants  intended  by  so  using  their  name  to 
deceive  the  public.23 


Walter  Baker  <&  Co.  v.  Slack,  130 
Fed.  514-1904  (C.  C.  A.  7th  Cir.). 

23  William  Rogers  Mfg.  Co.  v.  Rog- 
ers Mfg.  Co.,  16  Phila.  178  (Com.  PL 
Pbila.  1883).  The  plaintiff  company 
was  incorporated  in  1872,  and  suc- 
ceeded to  a  business  of  manufactur- 
ing silver  plate  which  had  long  been 
carried  on  by  three  brothers  named 
Eogers  and  their  successors.  Their 
goods  were  stamped  with  the  name 
"Wm.  Rogers  Mfg.  Co."  or  "  Wm. 
Rogers  &  Son,"  and  the  name  Rogers 
had  long  been  identified  with  these 
goods,  which  were  of  high  reputation. 
The  defendant  company  was  formed 
in  1883  by  George  Rogers,  a  lawyer, 
George  Linsenmayer,  a  silversmith, 
and  another,  and  it  stamped  its  goods 
*'  6  Rogers  A-l."  The  court  con- 
sidered that  in  adopting  its  name  de- 


fendant intended  to  mislead  the  pub- 
lic. Defendant  was  enjoined  from 
using  the  name  "  Rogers "  on  its 
ware.  The  court,  with  reference  to 
the  proposition  that  in  general  any 
man  may  apply  his  own  name  to  the 
goods  in  which  he  deals,  says :  "  But 
if  the  use  of  the  name  is  intended  to 
gain  an  advantage  over  anyone  al- 
ready established,  and  using  it  in  the 
same  trade,  or  if,  without  such  intent, 
the  effect  is  to  mislead  and  deceive 
buyers,  then  such  use  of  the  name  will 
be  prevented  by  injunction;  and 
while  all  intendments  are  made  in  fa- 
vor of  a  person  formerly  in  the  trade, 
when  he  sets  up  a  new  firm,  yet  the 
presumptions  are  against  a  stranger 
to  the  business,  when  he  sets  up  a 
rival  establishment"   (p.  179). 


Family  Names  or  Surnames,  as  Trade  Names. 


135 


In  1907,  William  H.  Rogers  started  in  silver  business,  mark- 
ing goods  ' '  W.  H.  Rogers,  of  Plainfield,  New  Jersey, ' '  and  his 
packages  "  Not  connected  with  any  other  Rogers."  Court 
held,  this  was  not  sufficient  identification.  He  must  mark  his 
goods  "  Not  the  original  Rogers,"  "  Not  connected  with  the 
original  Rogers. ' ' 24 

William  H.  Rogers,  a  bicycle  maker  at  Bristol,  began  to 
make  silver  stamped  "  Wm.  H.  Rogers."  One  Hubbard  fur- 
nished all  the  capital.  Held,  he  was  seeking  to  pass  off  his 
goods  fraudulently,  else  he  would  have  used  name  "  Rogers  & 
Hubbard."  Defendant  was  enjoined  from  use  of  word 
"  Rogers  "  associated  in  any  way  with  word  "  William  "  or 


24  International  Silver  Co.  v.  Rog- 
ers, N.  J.  Eq.  ;  67  Atl.  105- 
1907.  Complainant  was  the  successor 
to  the  good-will  of  an  extensive  busi- 
ness in  silver-plated  ware  originally 
established  by  the  Rogers  Brothers, 
by  whose  surname  the  goods  had  long 
been  generally  known.  Defendant, 
W.  H.  Rogers,  had  been  the  presi- 
dent of  a  rival  concern,  the  William 
H.  Rogers  Corporation,  which  had 
been  enjoined  from  the  use  of  any 
name  of  which  "  Rogers  "  was  a  part. 
Defendant  then  set  up  in  business  in 
his  own  name,  stamping  his  goods 
"  W.  H.  Rogers,  of  Plainfield,  N.  J.," 
and  marking  his  packages  "  not  con- 
nected with  any  other  Rogers."  Held, 
that  this  was  not  a  sufficient  differ- 
entiation, and  that  defendant  should 
be  enjoined  from  making  and  selling 
his  goods,  unless  he  should  stamp 
upon  them  "  not  the  original  Rogers  " 
or  "  not  connected  with  the  original 
Rogers."  "  The  normal  presumption 
that  the  use  of  one's  name  is  an 
honest  one  may  be  rebutted  by  show- 
ing a  fraudulent  use  of  it  touching 
the  matter  in  issue."  (Referring  to 
the  fact  that  such  fraudulent  prior 
use  was  here   established,  the  court 


proceeds : )  "  The  burden  is  there- 
fore on  the  defendant  to  show  that 
the  use  of  his  name  is  not  in  effect  a 
continuation  of  such  prior  f  raud " 
(id.  p.  106).  As  to  the  differentiating 
effect  of  the  addition  to  defendant's 
name  of  the  place  of  manufacture, 
the  court  remarks  that  the  original 
Rogers'  goods  had  been  manufactured 
in  various  places  and  says :  "  Lo- 
cality has  no  sufficiently  distinguish- 
ing force,  because  locality  is  not  asso- 
ciated in  any  way  with  the  mark 
itself."  As  to  defendants'  use  of  the 
words  "  Not  connected  with  any  other 
Rogers  "  on  the  wrappers,  the  court 
remarks  that  these  words  would  not 
reach  the  retail  purchaser,  and  adds 
that  even  if  they  do  they  would  not 
suffice.  "  These  words  merely  tend  to 
add  to  the  confusion.  They  might 
well  be,  and  usually  would  be,  em- 
ployed by  an  original  manufacturer 
seeking  to  warn  the  trade  when  he 
finds  on  the  market  other  goods 
which  may  be  passed  off  as  his.  In 
employing  such  words,  so  misleading 
and  ambiguous,  the  defendant  is 
clearly  guilty  of  bad  faith"  (id.  p. 
107). 


13G 


Unfair  Business  Competition. 


abbreviation  of  it.  The  corporation  was  not  enjoined  from  use 
of  word  "  Rogers"  with  words  "  W.  Henry,  Plainfield, 
N.J."25 

In  1901,  a  corporation  was  formed  by  Simon  L.  and  George 
H.  Rogers,  sons  of  one  of  the  original  Rogers  Brothers,  but 
neither  of  them  had  active  control  of  the  business.  They  ad- 
vertised their  ware  as  "  The  Real  Rogers  goods,"  etc.  They 
were  enjoined  from  using  the  word  "  Rogers  "  or  "  Rogers 
Bros."  or  stating  their  goods  were  "  The  Real  Rogers  goods  " 
or  that  they  were  "  the  only  real  Rogers  Bros."26  This  was 
on  the  preliminary  hearing. 


;5  International  Silver  Co.  v.  Wm. 
H.  Rogers  (N.  J.),  66  N.  J.  Eq. 
119,  57  Atl.  1037-1904.  In  1S90 
"William  H.  Rogers,  who  had  been, 
in  the  bicycle  business,  began  to 
make  spoons  and  forks  through  a 
company  at  Bristol,  having  them 
stamped  "  Wm.  H.  Rogers  Co."  In 
this  venture  he  was  at  first  with  one 
Hubbard,  who  furnished  all  of  the 
capital.  Held,  that  he  was  evidently 
seeking  to  pass  off  his  goods.  Had 
he  not  been  he  would  have  used  the 
name  "  Rogers  &  Hubbard."  The 
name  he  did  use  was  strikingly  like 
the  name  of  a  company  then  in  exist- 
ence, the  "  Wm.  H.  Rogers  Manufac- 
turing Co."  He  had  no  skill  or  repu- 
tation in  the  market  as  a  dealer  in 
silver  nor  any  financial  responsibility, 
and  yet  the  B.  Company  were  willing 
to  pay  five  cents  per  dozen  for 
knives  stamped  with  his  name.  This 
would  only  have  represented  the 
value  of  the  name  and  reputation  of 
the  predecessors  of  the  complainant. 
He  was  seeking  to  pass  off  his  goods 
as  the  goods  of  his  competitor.  A 
man  is  not  always  debarred  from  giv- 
ing his  own  name  to  a  corporation, 
where  it  happens  to  be  the  name  of 
the  competitor.  If  he  did  it  for 
some  good  reason  and  in  such  a  way 


as  not  to  mislead  the  public  his  name 
may  be  of  value  to  him  because  it 
suggests  his  skill  or  his  financial 
ability  or  something  else  that  belongs 
to  him.  In  this  case  there  was  no 
valid  reason  why  the  individual  name 
should  have  been  adopted  as  a  cor- 
porate name,  and  further  the  name 
was  not  embodied  in  the  corporate 
name  merely  but  in  its  most  objec- 
tionable form  with  the  abbreviation 
"  Wm.,"  just  as  in  the  corporate 
name.  For  this  the  court  held  that 
there  was  not  any  excuse.  The  grava- 
men of  the  action  was  not  fraud- 
ulent intent  but  misrepresentation, 
the  suggestio  falsi  is  to  be  found  in 
the  name  stamped  on  the  ware.  The 
W.  H.  Rogers  corporation  should  be 
enjoined  from  advertising  its  wares 
under  the  corporate  name  or  under 
any  name  in  which  the  word 
"  Rogers,"  with  the  word  "  William  " 
abbreviated  or  unabbreviated,  is  a 
part,  or  from  selling  its  wares  under 
that  name. 

20  International  Silver  Co.  v.  Simeon 
L.  &  George  H.  Rogers  Co.,  110  Fed. 
955-1901  (C.  C.  Conn.).  Defendant 
was  a  corporation  recently  organized 
to  make  silver-plated  ware.  Simeon 
L.  and  George  H.  Rogers,  after  whom 


Family  Names  or  Surnames,  as  Trade  Names. 


137 


These  eases  will  show  some  of  the  limitations  and  conditions 
imposed  on  the  use  of  names  in  trade,  by  those  who  have  an 
absolute  right  to  use  them  under  ordinary  circumstances.  These 
limitations  may  be  called  legal  regulations  of  a  person's  use 
of  his  name.  While  no  one  will  be  forbidden  by  equity  to 
use  his  name  in  trade,  that  court  has  large  power  to  regulate 
and  limit  that  use.26a 


it  was  named,  were  sons  of  one  of 
the  original  Rogers  brothers,  but 
neither  had  been  engaged  in  the 
manufacture  of  silver-plated  ware, 
though  one  had  been  employed  in  the 
business  at  small  wages.  Neither  of 
the  active  managers  of  the  defendant 
corporation  was  a  Rogers.  Defend- 
ant advertised  their  goods  as  "  The 
real  Rogers  goods,"  and  represented 
Simeon  L.  and  George  Rogers  as  "the 
only  real  Rogers  Brothers."  Held, 
that  defendant  should  be  restrained 
by  preliminary  injunction  from 
stamping  its  goods  "  Rogers "  or 
"  Rogers  Bros."  either  with  or  without 
an  accompanying  emblem,  monogram 
or  initials,  and  from  representing  its 
goods  to  be  "  The  real  Rogers  goods," 
and  the  manufacturers  to  be  "  the 
only  real  Rogers  Bros."  The  court 
postponed  until  a  final  hearing  the  de- 
termination of  the  question  whether 
or  not  defendant  should  be  enjoined 
from  the  use  of  its  corporate  name, 
as  having  been  adopted  solely  for  the 
purpose  of  unfair  competition.  In- 
ternational Silver  Co.  v.  Rogers  Bros. 
Cutlery  Co.,  136  Fed.  1019-1905  (C. 
C.  W.  D.  Mich.  5th  D.).  The  de- 
fendant company  was  formed  by  two 
persons  of  the  name  of  Rogers,  and 
another  person,  and  did  not  itself 
manufacture,  but  bought  and  sold 
cutlery.  It  placed  upon  the  market 
knives  manufactured  by  the  Muske- 
gon Cutlery  Co.,  and  stamped  them 


with  the  name  "  RoDgers  Bros.  Cut- 
lery Co."  (capitalizing  the  d).  Held, 
that  the  defendants'  use  of  the  name 
was  prima  facie  fraudulent.  Prelim- 
inary injunction  granted.  See  also 
International  Silver  Co.  v.  Wm.  H. 
Rogers  Corp.,  67  N.  J.  Eq.  646-1905, 
60  Atl.  187,  reversing  66  N.  J.  eq. 
119,  57  Atl.  1037;  International  Sil- 
ver Co.  v.  Rogers,  67  Atl.  105-1907, 
reversing  63  Atl.  977;  International 
Silver  Co.  v.  Wm.  G.  Rogers,  113 
Fed.  526-1902,  affirmed,  118  Fed. 
133. 

268  David  E.  Foutz  Co.  v.  S.  A. 
Foutz  Stock  Food  Co.,  163  F.  408- 
1908  (C.  C.  Md.).  Two  brothers, 
David  E.  and  Solomon  A.  Foutz, 
about  1858  sold  remedies  for  cattle, 
under  the  firm  name  S.  A. 
Foutz  &  Bro.  In  1867  Solomon 
A.  sold  out  to  his  brother,  who 
continued  the  business,  under  the 
name  S.  A.  Foutz  &  Bro.  until 
1903,  when  the  complainant  company 
was  organized.  The  various  reme- 
dies sold  by  it  had  long  been  known 
by  the  name  Foutz,  which  was  regis- 
tered as  a  trade-mark.  In  1904 
Stanley  A.  Foutz,  son  of  Solomon, 
organized  the  defendant  company 
and  began  to  sell  similar  remedies 
under  such  names  as  "  S.  A.  Foutz 
Condition  Powders,"  "  S.  A.  Foutz 
Liniment,"  etc.  There  was  no  simi- 
larity in  the  dress  of  the  packages. 
Attention  was  called  to   defendant's 


138  Unfair  Business  Competition. 

§  69.  Acquired  Generic  or  Secondary  Meaning  of  Names. — 
Out  of  this  difficulty  which  the  courts  have  found  in  pre- 
serving this  right  which  every  man  has  to  use  his  own  name 
and  at  the  same  time  preventing  injury  and  fraud  arising 
from  the  exercise  of  that  right,  the  doctrine  of  secondary  mean- 
ing has  been  evolved.  Words  which  form  a  part  of  the  common 
stock  of  the  language  may  become  so  thoroughly  identified  with 
some  one  person's  business  or  goods,  that  it  is  quite  possible 
that  the  use  of  them  alone,  without  any  qualifying  words  or 
other  explanation,  by  another  manufacturer,  would  deceive 
buyers  into  believing  that  there  was  but  one  concern  or  one 
brand  of  goods  instead  of  two.  This  supposes  the  extreme 
condition,  and  cases  involving  just  these  facts  are  rare.  There 
are  cases,  however,  on  record  where  a  name  has  become  so  com- 
pletely identified  with  a  particular  business  or  manufacturing 
plant  as  to  become  synonymous  with  it.  This  was  the  fact 
with  the  name  "  Stone  "  used  as  a  name  of  ale,  it  being  also 
the  name  of  the  town. 

This  "  Stone  Ale  "  case  is  perhaps  the  best  known  of  these 
cases,  and  held  that  the  geographical  name  Stone  having  been 
used  for  upwards  of  100  years  with  the  word  ale,  had  come 
to  mean  not  only  ale  which  happened  to  be  made  in  the  town 
of  Stone,  but  the  particular  ale  made  there  by  the  plaintiff  for 
so  many  years.27 

Where  a  personal  surname  becomes  so  identified  with  an 
object  or  business  or  manufacturing  plant  as  to  become  synony- 
mous with  it,  it  follows  that  for  any  other  person  to  use  the 
name  as  the  name  of  a  rival  business  —  even  though  he  bears 
the  name  and  his  fathers  have  borne  it  before  him — cannot 

trade-mark,    a    pansy.     Defendant's  goods   were    not   the   remedies    pre- 

goods,    however,    were    described    as  pared  by  the   David   E.   Foutz   Co., 

the  "  genuine "  ones.    Held,  that  de-  successor    to    S.    A.    Foutz    &    Bro., 

fendant  should  change  its  corporate  originally    established    in    Baltimore 

name  to  "  Stanley   A.   Foutz   Stock  about  1858. 
Food   Company,"   and   in  its   labels, 

advertisements,  etc.,  should  not  only  '.    w  Montgomery  v.  Thompson,  (1891) 

give  the  date  and  place  of  incorpo-  A.  C.  217,  64  L.  T.  R.  748.    For  dis- 

ration,  but  should  state  that  the  for-  cussion    of    rule    as    to    Secondary 

mulaa  followed  were  those  prepared  Meaning     of     Names     of     Business 

by  Stanley  A.  Foutz,  and  that  the  Houses  see  §§  82  to  86;  110  to  117. 


Family  Names  or  Surnames,  as  Trade  Names.  139 

but  create  confusion.  In  such  a  case,  only  one  concern  bearing 
that  name  can  exist  in  that  line  of  business  and  not  create  un- 
fair competition.  Such  generic  or  secondary  meaning  results 
from  long  association  with  goods  of  some  one  person  bearing 
the  name  in  question.  When  that  occurs,  other  persons  who 
rightfully  bear  that  name  can  be  enjoined  from  using  it  as  a 
trade  name  on  similar  goods.  ' '  Where  other  persons  bearing 
the  same  surname  have  previously  used  the  name  in  con- 
nection with  their  goods,  in  such  manner  and  for 
such  length  of  time  as  to  make  it  a  guaranty  that  the 
goods  bearing  the  name  emanate  from  them,  they  will 
be  protected  against  the  use  of  that  name,  even  by  a  person 
bearing  the  same  name,  in  such  form  as  to  constitute  a  false 
representation  of  the  origin  of  the  goods."28  It  is  quite  pos- 
sible that  a  trade  may  be  so  constituted  that  some  one  of  its 
products  will  become  eventually  completely  identified  with  one 
house  or  one  person  or  one  place.  This  person  may  have 
founded  the  business  and  developed  the  product,  yet,  in  oppo- 
sition to  the  rights  arising  out  of  such  a  condition,  stands  the 
other  right  of  every  other  person  bearing  that  same  name  to 
use  it  as  he  will.  The  English  Court  of  Appeals  said  in  1902, 
that  "  there  never  has  been  a  case  in  which  an  order  has  been 
made  restraining  a  man  altogether  from  carrying  on  in  his 
own  name  a  particular  trade.  Every  decision  that  has  as  yet 
been  given  has  been  limited  to  restraining  him  from  carrying 
on  such  trade,  so  identified  with  the  plaintiff's  business,  with- 
out taking  the  steps,  which  any  honest  man  ought  to  wish  to 
take,  to  prevent  his  goods  being  confounded  with  the  plaintiff's 
goods,  whose  goods  are  so  much  identified  with  the  particular 
trade. ' ' 29  This  statement  of  the  English  court  is  probably  true. 
There  are  few  if  any  cases  of  authority  which  absolutely  pro- 
hibit a  man  from  using  his  own  name,  although  a  person  has 
been  definitely  prohibited  from  using  an  adopted  name.30 

28  Landreth   v.    Landreth,    22    Fed.  M  Cash  v.  Cash,  19  R.  P.  C.  181- 

41-1884    (C.   C.  Wis.);   followed   in  1902;  86  L.  T.  211. 

Garrett  v.   T.  II.   Garrett  &   Co.,  78  30  Pinet    et    cie    v.    Maison    Louis 

Fed.  472-1896 ;  24  C.  C.  A.  173.  Pinet,  Ltd.,  15  R.  P.  C.  65-1897. 


140  Unfair  Business  Competition. 

In  1907,  the  United  States  Circuit  Court,  in  J.  F.  Rowley  Co. 
v.  Roivlcy?1  prohibited  E.  H.  Rowley  from  using  name  Rowley 
in  any  way  in  the  sale  of  artificial  limbs,  saying:  "As  an 
abstract  right,  every  person  has  the  right  to  the  use  of  his 
own  name;  but  when  the  use  of  such  name  is  but  a  cloak  to 
cover  an  intended  fraud  upon  the  right  of  another,  the  wrong- 
doer has  himself  and  not  the  law  to  blame  for  placing  a  limita- 
tion upon  the  right  of  the  use  thereof  "  (citing  cases).  And 
further, 

"  In  view  of  the  facts  of  this  case,  and  particularly  of  the 
conduct  of  his  respondent,  we  are  very  clear  that  nothing  short 
of  a  total  prohibition  of  the  name  Rowley  in  connection  with 
the  manufacture  and  sale  of  artificial  limbs  will  grant  to  the 
complainant  that  complete  protection  and  preservation  of  its 
property  in  its  trade  name  and  good-will  to  which  it  is  entitled 
under  the  law  "  (id.  p.  746). 

This  decision  has  been  overruled,  and  on  appeal  it  was 
held  that  the  defendant  could  not  be  enjoined,  entirely,  from 
using  his  own  name,  but  he  was  directed  to  accompany  his 
use  of  the  name  by  proper  explanations.31* 

A  person  has  been  forbidden  to  use  his  surname  in  a  particu- 
lar business,  where  he  has  sold  that  right  to  the  plaintiff  and 
his  use  of  it  in  that  business  after  the  sale  was  causing  con- 
fusion. This  was  done  in  the  case  of  Ball  v.  Best.32  Ball 
owned  Best  &  Co.,  of  New  York,  "  Liliputian  Bazaar,"  a 
house  selling  children's  clothing.  Defendant  having  formerly 
been  with  Best  &  Co.,  of  New  York,  as  had  his  brother,  left 

31  J.  F.  Rowley  Co.  v.  Rowley,  154  ness  for  himself.  His  business  sign, 
Fed.  744—1907  (C.  C.  Pa.).  Com-  under  his  own  name,  contained  in 
plainant,  The  J.  F.  Rowley  Co.,  had  large  letters,  the  words  "  Rowley 
for  many  years  made  artificial  legs  Artificial  Limbs."  He  not  only  de- 
in  Chicago,  which  had  a  high  repu-  scribed  his  goods  as  "  Rowley  Limbs," 
tation  and  were  known  as  "  Rowley  "  but  made  false  or  misleading  repre- 
legs.  Respondent,  E.  H.  Rowley,  a  sentations,  and  used  fraudulent  de- 
brother  of  the  president  of  complain-  vices  to  divert  trade  to  himself, 
ant,  had  been  employed  by  it  for  Held,  that  he  should  be  enjoined 
some  time  at  Chicago,  and  was  sent  from  using  the  word  "  Rowley "  in 
as  its  agent  to  Pittsburg.  Respond-  any  way  in  the  sale  of  artificial  limbs, 
ent's  agency  was  shortly  terminated,  3Ia  161  Fed.  91. 
whereupon  "he  set  up  in  same  busi-  S2 135  Fed.  431-1905  (C.  C.  111.). 


Family  Names  or  Surnames,  as  Trade  Names.  lil 

them  and  bought  S.  &  Co.,  of  Chicago,  and  took  the  name  of 
A.  S.  Best  &  Co.,  associating  his  brother  with  him,  nominally. 
On  his  sign  he  put  "  Liliputian  Outfitters  "  and  "  Formerly 
with  Best  Co.,  New  York."  "  Formerly  it  would  have  been 
assumed,  in  the  absence  of  most  positive  proof,  that  a  party 
might  carry  on  his  own  business  under  his  own  name  in 
Chicago,  notwithstanding  the  fact  that  parties  had  established 
business  under  the  same  name  in  New  York,  since  there  could 
be  no  presumption  that  the  business  interests  of  the  two  cities 
could  be  so  intimate  as  to  extend  the  good-will  of  such  a  busi- 
ness as  that  before  the  court  all  the  way  from  New  York  to 
Chicago.  It  is  not  a  light  thing  to  restrain  a  man  from  the  full 
benefit  of  his  name,  nor  would  a  court  of  equity  consider  such 
a  course  in  any  case  even  now,  in  the  absence  of  fraud  or  actual 
damage.  It  is  apparent  in  tins  case  that  defendant  shaped 
his  business  and  presented  the  same  to  the  public  with  the  in- 
tention of  getting  the  benefit  of  complainant's  standing  and 
business  prestige.  The  only  basis  upon  which  a  contrary  con- 
clusion could  be  arrived  at  would  be  positive  evidence  to  the 
effect  that  the  two  fields  of  patronage  did  not  conflict.  But  it 
is  in  evidence  that  complainant  is  a  manufacturer  and  dealer, 
and  that  he  does  a  large  mail  order  business,  as  does  also 
defendant.  It  hardly  needs  saying  that  the  proficiency  of  the 
mails  at  this  date  is  such  that  every  nook  and  corner  of  the 
nation,  as  well  as  of  Manitoba,  is  as  accessible  as  were  places 
fifty  miles  away  from  New  York  a  few  years  ago.  It  cannot 
be  otherwise  than  that  the  advertising  and  canvassing  of  these 
two  rival  concerns  pass  and  repass  each  other  innumerable 
times  in  their  journeys  to  the  centers  of  trade  as  well  as  to  the 
homes  of  the  people,  mute  contestants  for  the  favor  of  supply- 
ing the  wants  of  each  customer.  I  am  clear  that  under  the 
facts  in  this  case  the  court  must  hold  that  the  use  of  the  name, 
Best  &  Co.,  by  defendant,  even  with  its  present  prefix,  especi- 
ally in  connection  with  the  word  '  Liliputian, '  is  a  fraud  upon 
complainant's  business  rights.  The  action  of  defendant  was 
deliberate.  He  both  intended  to  and  did  trespass  upon  com- 
plainant's rights,  and  took  advantage  of  his  good-will  and 
trade.  It  is  not  important  what  definition  is  placed  upon 
1  Liliputian.'     The  name  of  Best  &  Co.,  with  the  use  of  that 


142  Unfair  Business  Competition. 

word,  constituted  complainant's  good-will.  That  use  was  ar- 
bitrary, and  stands  for  complainant's  goods.  The  complain- 
ant is  clearly  entitled  to  the  relief  prayed  for  as  to  the  use 
of  the  name  '  Best  &  Co.,'  with  and  without  prefixes,  but  only 
in  the  line  of  his  business  "  (id.  p.  436). 

The  Cash  case33  is  a  typical  case  of  this  character.  The 
plaintiff  and  defendant  had  absolute  right  to  the  name  Cash 
as  their  family  name.  They  were  in  business  in  the  same 
town ;  they  manufactured  the  same  articles,  viz.,  woven  names 
and  frillings.  The  problem  in  the  case  was  whether  it  was 
possible  for  Joseph  Cash,  the  defendant,  to  have  a  shop  in 
Coventry  and  there  sell  these  articles  and  not  have  them  known 
(as  the  plaintiff's  goods  had  been  known  for  some  years)  as 
"  Cash's  frillings,"  and  "  Cash's  woven  names,"  and  cause 
unfair  loss  of  trade  to  the  plaintiff.  The  lower  court  forbade 
the  defendant  to  sell  these  goods  under  the  name  of  Cash,  but 
the  Court  of  Appeal  modified  this  decision  and  its  injunction 
was  as  follows:  "  This  court  doth  order  that  the  defendant, 
Joseph  Cash,  be  restrained  from  selling  any  frillings  or  woven 
names  or  initials,  not  manufactured  by  the  plaintiffs,  as 
'  Cash's  Frillings  '  or  '  Cash's  Woven  Names  or  Initials  '  and 
from  carrying  on  the  business  of  a  manufacturer  or  seller  of 
frillings,  or  woven  names  or  initials,  under  the  name  of  '  Joseph 
Cash  &  Co.,'  while  not  in  partnership  with  any  other  person, 
or  from  carrying  on  any  such  business  either  in  the  name  of 
'  Cash, '  or  under  any  style  in  which  the  name  '  Cash  '  appears, 
without  taking  reasonable  precautions  to  clearly  distinguish 
the  business  carried  on,  and  the  frillings  and  woven  names  and 
initials  manufactured  or  sold  by  the  defendant  from  the  busi- 
ness carried  on,  and  the  frillings  and  woven  names  manufac- 
tured by  the  plaintiff,  and  from  carrying  on  any  such  busi- 
ness under  any  name  or  in  any  manner  so  as  to  mislead 
or  deceive  the  public  into  the  belief  that  the  business  of 
the  defendant,  or  the  frillings  or  woven  names  or  initials 
manufactured  or  sold  by  him  are  the  business  of,  or  the  goods 
manufactured  by  plaintiff,  or  that  the  defendant  is  carrying 
on  the  business  formerly  carried  on  at  Coventry  by  Messrs. 

"Cash  v.  Cash,  19  R.  P.  C.  181-1902. 


Family  Names  or  Surnames,  as  Trade  Names.  143 

J.  &  J.  Cash,  the  vendors,  predecessors  in  business  of  the 
plaintiffs. ' ' 

The  defendant  was  prohibited  also  from  making  over  his 
business  to  a  corporation  with  a  name  likely  to  mislead,  or 
from  soliciting  any  of  Cash's  former  customers  in  any  way. 

Lindley,  L.  J.,  in  Jamieson  v.  Jamieson,34  states  that :  "  The 
court  ought  not  to  restrain  a  man  from  carrying  on  business 
in  his  own  name  simply  because  there  are  other  people  who  are 
doing  the  same  and  who  will  be  injured  by  what  he  is  doing. 
It  would  be  intolerable  if  the  court  were  to  interfere,  and  to 
prevent  people  from  carrying  on  business  in  their  own  name 
in  rivalry  to  others  of  the  same  name.  There  must  be  some- 
thing far  more  than  that,  viz.,  that  the  person  who  is  carry- 
ing on  the  business  in  his  own  name  is  doing  it  in  such  a  way 
as  to  pass  off  his  goods  as  the  goods  of  somebody  else.  We 
must  not  lose  sight  for  a  moment  of  the  real  question  which  we 
have  to  try  —  the  question  of  fact  "  (id.  p.  181),  whether  he 
is  passing  off,  or  conducting  his  trade  in  such  a  way  as  to 
pass  off  his  goods  as  the  goods  of  somebody  else. 

The  same  judge  said  substantially  the  same  thing,  though  in 
different  language,  with  reference  to  different  circumstances 
in  Powell  v.  Birmingham  Vinegar  Brewery  Company.55 
"Again,  if  a  person  uses  words  which  simply  describe  the  kind 
of  goods  he  makes  or  sells  —  e.  g.,  leather  boots  —  it  would 
be  intolerable  to  confer  upon  him  the  right  to  prevent  other 
persons  from  honestly  using  the  same  words  to  describe  what 
they  make  or  sell.  Although,  however,  a  person  by  using  his 
own  name,  or  a  merely  descriptive  word,  to  denote  a  particular 
article,  cannot  prevent  other  bona  fide  traders  of  the  same 
name  from  using  it,  or  prevent  other  bona  fide  traders  making 
or  selling  the  same  sort  of  goods  from  using  the  same  descrip- 
tive words,  yet,  even  in  such  a  case,  if  the  descriptive  name  is 
proved  to  mean  the  goods  of  the  plaintiff,  and  if  deception  is 
also  proved,  a  person  may  be  restrained  from  using  such  name 
or  word  without  taking  such  steps  as  will  render  mistakes 
unlikely  to  occur. 1fSa 

14 15  R,  P.  C.  169-81-1897.  ™  Fine       Cotton      Spinners      and 

35  (1896)  2  Ch.  54-69;  s.  e.  on  ap-      Doublers    Assn.    Ltd.     v.    Harwood 

peal,  (1897)  L.  R.  A'pp.  Cas.  710.  Cash   &   Co.   Ltd.,  2   Ch.   184-1907. 


lU 


Unfair  Business  Competition. 


§  70.  Surnames  which  by  Usage  Become  Abstract  Names 
of  Objects. —  Sometimes  family  names  acquire  not  only  a  sec- 
ondary meaning,  but  become  the  primary  name  of  an  article 
which  anyone  may  use.  But  even  then,  no  one  may  pass  his 
goods  off  as  those  of  the  original  maker  of  the  article  by  the 
use  of  the  name.  "  Where  the  name  is  one  which  has  pre- 
viously thereto  come  to  indicate  the  source  of  manufacture  of 
particular  devices,  the  use  of  such  name  by  another,  unac- 
companied with  any  precaution  or  indication,  in  itself  amounts 
to  an  artifice  calculated  to  produce  the  deception  alluded  to 
in  the  foregoing  adjudication."37  Names  so  used  may  not  be 
appropriated  by  any  one  person  any  more  than  one  is  allowed 
to  approjoriate  to  himself  the  name  "  "Wine  Company,"  or 
"  Cotton  Company."  They  become  necessary  to  all  as  the 
only  words  to  name  as  article  of  general  use;  they  are  general 
terms.  Such  a  name  is  "  Goodyear  Rubber,"  viz.,  rubber 
manufactured  or  treated  by  Goodyear 's  particular  process;  or 
"  Liebig's  "  Meat  Extract,  or  "  Hostetter's  "  Bitters.68 


Plaintiffs  made  yarns  long  associated 
by  the  public  with  the  word  "  Cash/' 
originally  a  family  name,  the  goods 
being  generally  described  as  "  Cash  " 
goods.  John  Harwood  Cash,  for- 
merly employed  by  plaintiffs,  formed 
the  defendant  company  in  order  to 
carry  on  a  competing  business.  Held, 
that  the  use  of  the  name  "  Cash  "  as 
part  of  the  defendant's  corporate 
title  would  be  enjoined. 

"Singer  Mfg.  Co.  v.  June  Mfg. 
Co.,  163  U.  S.  169-1895;  41  L. 
ed.  118;  16  Sup.  Ct.  1002,  quoted 
in  International  Silver  Co.  v.  Rogers, 
67  Atl.  105-1907. 

88  Goodyear  India  Rubber  Glove 
Mfg.  Co.  v.  Goodyear  Rubber  Co., 
128  U.  S.  598-1888;  32  L.  ed.  538;  9 
Sup.  Ct.  166.  Plaintiff  was  organized 
in  New  York,  Nov.,  1872;  prior  to 
that  time  defendant  existed  under 
laws  of  Connecticut.  For  many  years 
defendant  had  used  and  was  known 


to  trade  as  "  Goodyear's  Rubber 
Manufacturing  Co."  or  "  Goodyear 
Rubber  Co."  or  "The  Goodyear's 
Company."  Held,  "  The  name 
'  Goodyear  Rubber  Company '  is  not 
one  capable  of  exclusive  appropria- 
tion. '  Goodyear  Rubber '  are  terms 
descriptive  of  well-known  classes  of 
goods  produced  by  the  process  known 
as  Goodyear's  invention.  Names 
which  are  thus  descriptive  of  class 
and  of  goods  cannot  be  exclusively 
appropriated  by  anyone.  The  addi- 
tion of  the  word  '  Company '  only  in- 
dicates that  parties  have  formed  an 
association  or  partnership  to  deal  in 
such  goods.  Thus  parties  *  *  * 
might  stj'le  themselves  Wine  Com- 
pany, Cotton  Company  or  Grain 
Company.  All  persons  have  a  right 
to  deal  in  such  articles  and  to  pub- 
lish the  fact  to  the  world."  Liebig 
Extract  of  Meat  Co.,  Ltd.  v.  Walker, 
115    Fed.    822-1902.      Complainant 


Family  Names  or  Surnames,  as  Trade  Names. 


145 


A  person  may  be  enjoined  from  using  his  own  name  in  the 
naming  of  a  new  business,  where  there  already  exists  a  concern 
in  that  line  of  business  of  which  his  name  is  a  part.  To  allow 
this  would  be  to  so  allow  the  use  of  a  name  as  to  create  con- 
fusion, although  no  bad  faith  or  actual  deception  is  shown. 
This  is  especially  true  where  the  name  of  the  older  concern 
has  acquired  a  secondary  meaning  as  connected  with  that  con- 
cern or  its  goods.39 


made  and  sold  extract  of  meat,  put 
up  in  two-ounce  jars,  with  a  wrapper 
and  neck  label,  and  capped  with  a 
metallic  capsule.  The  label  bore  the 
words  "  Liebig's  Extract  of  Meat," 
the  name  of  complainant  as  maker, 
and  the  facsimile  signature  "  J.  V. 
Liebig  "  in  blue  script,  running  diag- 
onally across  the  printed  matter. 
Defendant  offered  an  extract  of  meat 
put  up  in  jars  of  the  same  shape 
and  size,  with  neck  label  and  wrap- 
per of  substantially  the  same  ap- 
pearance, printed  in  the  same  colors 
and  bearing  the  words  "  Liebig's  Ex- 
tract of  Beef  "  and  the  names  "  Lie- 
big  Fluid  Beef  Co."  and  "Liebig 
Beef  Co.,"  both  of  which  were  fic- 
titious. Diagonally  across  the  wrap- 
per was  the  facsimile  signature  "  J. 
T.  Walker "  in  blue  script,  resem- 
bling in  appearance  the  signature  on 
complainant's  wrappers,  and  other 
portions  of  the  reading  matter  were 
similar.  Held,  that  while  defendant 
was  at  liberty  to  use  the  word  "  Lie- 
big,"  prefixed  to  the  words  "Extract 
of  Meat,"  as  "  Liebig "  had  become 
a  generic  designation  of  the  article, 
yet  defendant  was  guilty  of  unfair 
competition  in  the  dress  of  his  goods, 
and  in  using  the  name  "  Liebig's 
Fluid  Beef  Co."  Liebig's  Extract 
of  Meat  Co.  Ltd.  v.  Libby,  Mc- 
Neill &  Libby,  103  Fed.  87-1900 
(C.  C.N.  D.  111.).    Complainant  had 

10 


for  many  years  sold  this  product  ex- 
tensively in  the  United  States,  when 
defendant  entered  the  market  with  a 
similar  extract  distinctively  dressed, 
but  subsequently  sent  out  its  goods  in 
a  package  very  similar  to  complain- 
ants' in  color  and  general  appearance, 
and  used  on  the  package,  as  the  name 
of  the  maker,  the  fictitious  title  of 
"  Liebig  Fluid  Beef  Co."  Held,  un- 
fair competition.  Hostetter  v.  Fries, 
17  Fed.  620-1883  (C.  C.  S.  D.  N.  Y.). 
Complainants  manufactured  "  Dr.  J. 
Hostetter's  Stomach  Bitters  "  but  the 
process  was  not  patented.  Held,  that 
since  it  was  open  to  anyone  to  manu- 
facture such  bitters,  and  since  the 
only  name  by  which  the  article  was 
known  was  "  Hostetter's  Bitters," 
defendants  were  entitled  to  make  and 
sell  similar  bitters  (or  an  essence 
from  which  they  might  be  prepared) 
and  to  call  them  "  Hostetter's  Bit- 
ters "  so  long  as  there  was  no  simula- 
tion in  bottles,  labels  or  devices;  also 
that  defendants  were  not  liable  for 
the  unlawful  acts  of  retailers  merely 
because  they  supplied  them  with  some 
of  the  means  employed  by  them  (the 
retailers). 

88  Dunlop  Pneumatic  Tire  Co. 
Ltd.  v.  Dunlop  Motor  Co.  Ltd.,  22 
R.  P.  C.  533-1905  (Ct.  Sessions  Scot- 
land). Complainers  from  188S  used 
the  name  "  Dunlop "  in  connection 
with  their  goods   such   as  tires  and 


146  Unfair  Business  Competition. 

§  71.  Priority  in  Use,  Not  Resulting  in  Secondary  Meaning-. 
—  The  right  to  the  use  of  a  family  name  seems  to  be  more  of 
a  question  of  priority  than  of  the  wideness  of  the  reputation  it 
achieves.  The  fact  that  one's  name  is  widely  known  does  not 
give  him  a  basis  for  claiming  protection  against  its  use  by 
another  of  the  same  name;  but  it  seems  to  be  a  question  as  to 
which  one  of  them  first  put  out  goods  bearing  the  name  —  who 
it  is  that  the  world  first  knew  by  that  name  in  connection  with 
the  particular  business  in  question.  A  manufacturer  cannot, 
by  extensively  advertising  his  name  in  connection  with  his 
goods,  acquire  a  right  to  prevent  another  with  the  same  sur- 
name from  selling  similar  goods  under  that  surname,  when 
such  other  person  has  for  many  years  manufactured  such 
goods  and  put  his  full  name  on  his  labels.40 

"  While  all  intendments  are  made  in  favor  of  a  person 
formerly  in  the  trade  when  he  sets  up  a  new  firm,  the  pre- 
sumptions are  against  a  stranger  to  a  business  when  he  sets  up 
a  rival  establishment."41  There  is  also  a  presumption  that 
the  use  of  one's  own  name  is  an  honest  one;  but  it  may  be  re- 
butted by  showing  a  prior  fraudulent  use  of  the  name.42  And 
where  there  has  been  such  prior  use,  the  burden  is  on  the  de- 
fendant to  show  that  the  use  of  his  name  which  is  questioned  is 
not,  in  effect,  a  continuation  of  such  prior  use.  The  Illinois 
court  has  enjoined  a  nephew  from  using  the  family  name  which 
both  he  and  his  uncle  bore,  in  the  same  business  as  that  of  his 

various    accessories    for    cycle    and  noting  the  complainers'  goods,   that 
motor  cars,  and  this  name  had  become  defendant's  name   as   a  trade  name 
identified    with    their    goods    in    the  was    calculated   to   create    confusion, 
mind  of   the   trade   and   the   public.  and  that  while  neither  bad  faith  nor 
Defendant  was  incorporated  to  take  actual  deception  were  shown,  defend- 
over  the  motor  branch  of  the  busi-  ant  should  be  interdicted  from  carry- 
ness   of    a   retail    firm    composed   of  ing  on  business  under  its  corporate 
Robert    and    John    F.    Dunlop,    and  name  above  mentioned, 
known  as  R.  &  J.  F.  Dunlop,  which  *°  American  Cereal  Co.  v.  Eli  Petti- 
had    from    1898    sold    and    repaired  john   Cereal   Co.,   72   Fed.   903-1S96 
cycles  and  motor  cars,  but  carried  on  (C.  C.  111.),  affirmed  76  Fed.  372. 
substantially  the  same  business  as  the  41  Wm.  Rogers  Mfg.  Co.  v.  Rogers 
firm  of  R.  &  J.  F.  Dunlop.     Held,  Mfg.  Co.,  16  Phila.  178-80-1883. 
that     the      name      "  Dunlop "      had  *'  International  Silver  Co.  v.  Rogers, 
acquired  a  secondary  meaning  as  de-  67  Atl.  105-1907. 


Family  Names  or  Surnames,  as  Trade  Names. 


147 


uncle,  where  the  nephew  opened  a  store  near  the  uncle's  with 
similar  show  windows,  and  goods  packed  in  similar  boxes  and 
bearing  similar  labels.43 

Again  where  Hires  had  built  up  a  prosperous  business,  the 
court  enjoined  another  person  of  same  name  from  entering 
the  same  business  under  the  name  of  Hires.44  See  §§  76  and 
103. 


43  Rub  el  v.  Allegretti  Chocolate 
Cream  Co.,  76  111.  App.  581-1898. 
Complainant,  the  Allegretti  Chocolate 
Cream  Co.,  was  the  successor  of  Ig- 
nazio  Allegretti,  who  had  long  made 
and  sold  confections  widely  and 
favorably  known  as  "Allegretti " 
Chocolate  Cream.  He  and  his  two 
sons  were  the  only  persons  interested 
in  the  complainant  corporation.  De- 
fendant Giacomo  Allegretti  was  a 
nephew  of  Ignazio  and  had  for  sev- 
eral years  been  in  his  or  complain- 
ants' employ,  and  formed  a  partner- 
ship for  the  making  of  chocolate 
creams  with  B.  F.  Rubel  and  I.  A. 
Rubel,  hardware  merchants,  under 
the  Ann  name  "Allegretti  &  Co." 
The  firm  then  opened  a  store  not  far 
from  complainants'  with  very  simi- 
larly arrayed  show-windows,  and  the 
goods  resembled  complainants'  in  ap- 
pearance, and  were  put  up  in  similar 
boxes  with  similar  labels.  Held,  that 
defendants  were  properly  enjoined 
from  using  the  name  "Allegretti "  or 
"Allegretti  &  Co." 

44  Charles  E.  Hires  Co.  v.  George 
A.  Hires,  182  Pa.  St.  346-1S97;  37 
Atl.  1117.  Plaintiff  put  on  the 
market  Hires  Root  beer  and  it  be- 
came well  known ;  defendant  later  en- 
tered same  business  under  his  own 
name.  "  But  for  the  fortuitous 
identity  of  family  name  it  is  clear 
that  the  respondents  would  not  have 
embarked  in  this  proposed  commer- 


cial venture  and  the  evidence  shows 
their  studied  purpose  was  to  keep  as 
close  to  the  appearances  and  name 
of  the  plaintiff's  article  as  possible 
and  preserve  similarity  while  yet  pre- 
senting minor  differences"  (p.  347). 
Injunction  awarded.  Van  Stan's 
Stratena  Co.  Ltd.  v.  Van  Stan,  209 
Pa.  St.  564-1904;  58  Atl.  1064.  De- 
fendant's father  assigned  to  plaintiff's 
assignor  right  to  make  a  ware  which 
he  had  invented  and  to  use  his  name. 
Defendant,  who  was  a  son  of  the  in- 
ventor, after  being  in  employ  of  plain- 
tiff, withdrew  and  sold  the  ware  under 
his  own  name,  simulating  plaintiff's 
label,  etc.  Held,  defendant  had  not 
the  right  to  use  his  own  name  as  a 
trade-mark  of  the  goods  sold  by  him. 
"  But  assuming  he  had  a  technical 
right  to  use  his  own  name,  he  clearly 
had  no  right  to  use  it  to  deceive  the 
public,  for  such  a  use  would  be  a 
fraud  upon  the  clear  right  of  the 
purchasers  of  the  trade-mark.  That 
he  intended  to  and  did  deceive  *  *  * 
is  manifest  from  the  evidence  "■ 
(p.  569).  Citing  Russian  Cement  Co. 
v.  LePage,  147  Mass.  206-1888;  17 
N.  E.  304;  Fish  Bros.  Wagon  Co.  v. 
La  Belle  Wagon  Works,  82  Wis. 
546-1892;  52  N.  W.  595;  16  L.. 
R.  A..  453;  Stonebraker  v.  Stone- 
braker,  33  Md.  252-1S70;  Holmes  et 
al.  v.  Holmes  Mfg.  Co.,  37  Conn. 
27S-1S70.  Pillsbunj  v.  Pilhbury- 
Washburn  Flour  Mills  Co.,  64  Fed. 


148 


Unfair  Business  Competition. 


§  72.  Surnames  Used  as  Abbreviations. —  A  family  name 
often  used  in  an  abbreviated  form, — "  AYannamaker's," 
"  Hires',''  Huyler's,"  "  Cameron's;"  and  being  the  particu- 
lar "  Huyler's  "  whose  store  the  people  have  in  mind,  when 
they  speak  of  "  Huyler's,"  is  a  most  valuable  asset.  When 
any  particular  concern  has  reached  such  a  place  in  the  regard 
of  the  public  as  to  be  known  generally  in  that  familiar  way, 
that  concern  has  a  right  to  protection  against  a  rival  which 
advertises  itself  simply  by  use  of  the  family  name  without 
qualification.45     The  use  of  the  same  proper  name  in  con- 


841-1894  (C.  C.  A.  7th  Cir.).  Com- 
plainant-appellee was  the  successor 
in  business  of  Chas.  A.  Pillsbury  & 
Co.  and  had  long  been  known  as  a 
manufacturer  of  floiu',  which  was  of 
a  superior  grade,  and  was  made  by  a 
patent  process.  They  had  long  ap- 
plied to  their  packages  a  brand  the 
principal  part  of  which  was  inclosed 
in  a  circle,  and  read;  "  Pillsbury's 
Best  X  X  X  X  Minneapolis,  Minn." 
Defendant  appellant,  L.  F.  Pillsbury, 
was  a  dealer  in  flour  in  a  small  town 
in  Illinois;  in  1S93  he  began  to 
put  up  and  sell  flour,  which 
he  bought  of  various  millers,  in 
packages  bearing  a  brand  closely 
resembling  complainant's  in  ap- 
pearance and  in  the  colors  of  the 
letters,  the  principal  part  of  which, 
inclosed  in  a  circle,  read :  L.  F.  Pills- 
bury' XXXXXXX,  Best  Patent,  Min- 
nesota." Held,  that  this  mark  was 
a  colorable  imitation  of  complain- 
ants', intended  to  mislead  the  public 
as  to  the  origin  of  the  goods,  and 
that  it  did  not  avail  defendant  that 
he  was  accustomed  to  explain  to 
dealers  that  he  was  not  selling  com- 
plainant's flour,  but  other  flour  of 
equal  or  superior  grade. 

45  Church  v.  Kresner,  26  App.  Div. 
(N.  Y.)   349-1S98;  49  N.  Y.  Supp. 


742.  In  1892,  plaintiff  entered  the 
retail  clothing  business,  in  Brooklyn, 
as  "  Cameron's."  At  that  time  there 
was  no  other  establishment  in  Brook- 
lyn using  that  name  nor  had  one  of 
that  name  been  known  there  before. 
In  1894,  defendant  opened  a  store 
near  the  plaintiff's  and  began, 
through  his  agents  and  employees,  to 
create  the  impression  that  his  store 
was  "  Cameron's,"  by  use  of  various 
devices  all  of  which  injiu-ed  the  plain- 
tiff. In  1895,  defendant  openly  pro- 
claimed by  signs  and  other  devices 
his  place  as  "  Cameron's."  Plaintiff 
alleged  that  such  adoption  of  the 
name  "  Cameron's "  as  a  business 
name  or  trade  sign  and  defendant's 
conduct  of  the  business  was  for  the 
purpose  of  deceiving  the  public  into 
believing  that  defendant's  place  of 
business  was  in  reality  that  of  the 
plaintiffs.  On  the  authority  of  Hig- 
gins  Co.  v.  Higgins  Soap  Co.,  144 
N.  Y.  462-1895;  Lee  v.  Haley,  L.  R. 
5  Ch.  App.  155-1869 ;  Devlin  v.  Dev- 
lin, 69  N.  Y.  212-1877;  Caswell  v. 
Hazard,  121  N.  Y.  484-1890;  24  N. 
E.  707,  the  court  held  (p.  353) :  "  If 
the  defendant  had  been  desirous  of 
building  up  a  reputation  for  himself, 
if  he  had  not  found  the  name  of 
"  Cameron's  "  to  have  a  value  to  which 


Family  Names  or  Surnames,  as  Trade  Names. 


149 


junction  with  separate  descriptive  words  which  accurately 
describe  the  character  of  the  article  to  which  they  are  applied 
will  not  be  enjoined.  For  instance,  in  Brown  Chemical  Co.  v. 
Meyer,46  plaintiff  made  "  Brown's  Iron  Bitters;"  and  later 
defendant  began  to  make  "  Brown's  Iron  Tonic,"  and  put  the 
tonic  up  in  containers  of  different  size,  color,  and  appearance 
and  with  different  labels  from  that  used  by  plaintiff.  In- 
junction was  refused  by  the  United  States  Supreme  Court, 
which  said  that  the  words  ' '  Iron  Bitters  ' '  are  descriptive  of 
the  article  sold.  Every  man  has  a  right  to  his  own  surname  for 
a  legitimate  purpose,  provided  he  has  not  assigned  or  parted 
with  this  right  to  the  use  of  it,  the  distinction  between  lawful 


he  had  contributed  no  part  and  to 
which  he  had  no  right  of  enjoyment, 
can  we  conceive  of  a  reason  why  he 
should,  after  a  business  experience  of 
some  months,  take  to  himself  a  name 
which  had  already  been  adopted  by 
another  in  the  same  kind  of  business 
and  in  his  own  immediate  locality'? 
There  can  be  but  one  answer  to  this 
question."  E.  H.  Taylor,  Jr.  &  Sons 
Co.  v.  Taylor,  (Ky.)  85  S.  W.  1085- 
1905.  Plaintiff  and  its  predecessors 
had  long  distilled  and  sold  a  pure 
whiskey  which  had  become  well 
known  as  "  Old  Taylor "  whiskey. 
Defendant  was  not  a  distiller,  but  a 
rectifier,  and  began  putting  upon  the 
market  a  blended  whiskey  at  a  lower 
price  as  "  Fine  Old  Kentucky  Tay- 
lor "  whiskey,  advertising  it  as  pure 
whiskey,  and  describing  the  sellers  as 
distillers.  His  bottles  did  not  re- 
semble plaintiff's  nor  could  his  labels 
be  said  to  resemble  plaintiff's,  except 
in  the  use  of  the  words  above  men- 
tioned. Held  that,  while  there  was  no 
infringement  of  trade-mark,  there  was 
fraudulent  simulation  tending  to  mis- 
lead those  not  familiar  with  the 
whiskey  trade.  Morton  v.  Morton, 
148  Cal.  142-1905;  '82  Pac.  664;  1 


L.  R.  A.  N.  S.  660n.  Plaintiffs, 
Wm.  R.  Morton  and  others,  were  ex- 
pressmen using  as  a  business  name 
"  Morton's  Special  Delivery."  They 
employed  many  agents,  who  wore 
upon  their  hats  a  badge  bearing  con- 
spicuously the  name  "  Morton  "  and 
this  badge  became  familiar  to  the 
public  as  designating  plaintiff's 
agents.  Defendant,  John  Morton, 
opened  a  similar  business,  under  the 
name  of  "  Morton's  Transfer  Com- 
pany "  and  his  agents  used  a  badge 
similar  in  size,  color,  and  appearance 
to  that  of  plaintiff's,  bearing  the 
word  "  Morton's  "  in  letters  precisely 
resembling  those  on  plaintiff's  badge. 
Held,  that  defendant  should  be  en- 
joined from  using  a  badge  with 
the  word  "  Morton's."  Barber  v. 
Manico,  10  R.  P.  C.  93-1893.  De- 
fendant enjoined  from  selling  in 
Ireland  knives  marked  "  Edward 
Barber  "  where  plaintiff's  knives  were 
known  in  Ireland  as  "  Barber's 
knives "  and  were  stamped  "  Era 
James  Barber,  Sheffield,"  this  being 
a  trade-mark  of  plaintiff's. 

40 139   U.   S.   540-1890;  35  L.  ed. 
247;  11  Sup.  Ct.  625. 


150 


Unfair  Business  Competition. 


and  unlawful  use  of  one's  own  name  being  illustrated  by  Croft 
v.  Dayi7  and  by  Holloivay  v.  Hollo  way. ,48 

It  will  be  seen  by  the  foregoing  cases  that  there  is  a  marked 
difference  between  the  use  of  a  complete  name,  first  name, 
middle  name,  if  any,  and  surname,  and  the  use  of  the  surname 
alone.  The  likelihood  of  confusion  is  much  increased  in  the 
latter  use.  xVnd  there  is  little  doubt  but  such  use  of  a  name 
will  be  enjoined,  while  the  injunction  will  often  be  refused 
where  a  person  uses  his  full  name.  See  Charles  E.  Hires  v. 
George  A.  Hires.™ 

§  73.  Names  Made  Up  of  Surnames  with  Other  Words  or 
Symbols. —  The  mere  addition  of  qualifying  words  such  as 
"  Famous,"  "  Genuine,"  "  Original,"  etc.,  will  not  take  a 
name  which  otherwise  would  be  similar  to  the  name  already 
in  use,  out  of  the  rules  of  unfair  competition.50 

§  74.  Surnames  Acquired  Otherwise  than  by  Descent. — 
A  person  who  bears  the  same  family  name  as  some  one  who 
is  running  a  business  under  the  common  surname  will  not  be 
allowed  to  sell  or  transfer  the  right  to  use  the  name  to  a  third 
person  who  has  no  interest  in  it,  when  the  vendor  has  never 


47  7  Beav.  84-1S43. 

48 13  Beav.  209-1850. 

49 182  Pa.  St.  346-1897;  37  Atl. 
1117. 

60  Drake  Medicine  Co.  v.  Glessner, 
'68  Ohio  St.  337-1S93 ;  67  N.  E.  722 ; 
.62  L.  R.  A.  941.  "  The  plaintiff's  al- 
leged trade-mark  identified  *  *  * 
a  '  Croup  remedy '  which  originated 
with  one  Dr.  August  Drake,  a  German 
physician  who  formerly  resided  in  the 
State  of  Iowa,  and  from  whom  the 
plaintiff  obtained  the  formula.  In  a 
.sense,  therefore,  the  plaintiff's  trade- 
mark indicates  the  origin,  and  is  a 
guarantee  of  the  character  and  qual- 
ity of  the  remedy  which  was  sold 
with  that  trade-mark  for  ten  years 
•before  the  defendant,  Warren  W. 
Drake,  who  resided  daring  all  of  that 
lime  in  the  same  town  in  which  the 


plaintiff  conducted  his  business,  came 
into  the  market  with  his  competitive 
product.  Warren  W.  Drake  had  the 
right  to  make  and  sell  a  croup  rem- 
edy different  from  the  plaintiff's 
compound  using  his  own  name;  but 
under  the  circumstances  found  by 
court  below  he  could  only  do  so  in 
such  an  honest  and  legitimate  manner 
that  the  public  would  not  be  de- 
ceived nor  his  competitor  defrauded. 
For  the  reasons  stated  and  upon  the 
facts  specially  found  by  the  circuit 
court,  which  are  conclusive  here,  we 
are  satisfied  that  the  plaintiff  has 
such  an  interest  in  the  words  '  Dr. 
Drake  German  Croup  Remedy '  as 
a  trade-mark  that  the  use  of  the 
words  '  Dr.  Drake's  Famous  German 
Croup  Remedy '  by  the  defendants 
is  an  infringement  thereof  "  (p.  357). 


Family  Names  or  Surnames,  as  Trade  Names. 


151 


carried  on  the  business  in  which  the  third  person  is  engaged. 
The  English  Chancery  Division  has  held  that  a  person  cannot, 
at  will,  confer  the  right  on  others  to  use  Ins  surname.  Nor  can 
he  hire  himself  to  another  and  stipulate  that  the  other  shall 
carry  on  the  business  in  the  employee's  name,  when  such  a 
transaction  would  cause  confusion  with  the  business  of 
another.51 


61  Tussaud  v.  Tussaud,  44  Ch.  Div. 
678-1S90.  Plaintiff  carried  on  a  wax 
works  exhibition,  which  had  been 
founded  in  1S02  by  Madame  Tussaud. 
The  wax  works  were  often  spoken 
of  as  "  Tussaud's."  The  father  of 
the  defendant,  Louis  Joseph  Kenny 
Tussaud,  formerly  ran  the  exhibition 
for  the  plaintiff.  In  1890  he  opened 
a  wax  works  under  the  name  of 
"  Louis  Tussaud,  Limited."  Circulars 
stated  that  he  had  no  connection  with 
the  plaintiff.  At  the  time  of  the  suit 
the  defendant  had  not  carried  on  any 
exhibition  on  his  own  account  or 
modelled  any  figures  for  his  own  use. 
Stirling,  J.,  held  that  the  word  "  Tus- 
saud "  was  well  known  and  of  high 
reputation  in  connection  with  wax 
works,  and  visitors  who  had  heard  of 
the  plaintiff  company's  exhibition 
would  likely  be  misled  into  going  to 
see  the  other  company's  exhibition. 
The  question  was  whether  or  not, 
granting  that  the  defendant  company 
should  be  restrained,  the  defendant, 
himself  bearing  the  name  "  Tussaud," 
should  be  restrained  also.  "  I  con- 
ceive it  to  be  clear  that  the  defendant 
could  not,  either  for  valuable  consid- 
eration or  otherwise,  confer  on  an- 
other person  the  right  to  the  use  of 
the  name  of  '  Tussaud '  in  connec- 
tion with  the  business  which  the  de- 
fendant had  never  carried  on,  and  hi 
which  the  defendant  had  no  interest 
whatever.     Then  comes  the  question, 


can  he  confer  that  right  on  a  per- 
son or  a  company  toward  whom 
he  stands  simply  in  the  position  of  a 
paid  servant?  He  could  no  doubt 
confer  the  right  of  saying  that  the 
business  is  under  his  management, 
but  could  he  go  to  the  same  private 
individual  and  say  to  him,  '  I  will 
become  your  servant  as  manager  and 
modeller  for  several  years,  and  you 
shall  carry  on  the  business  (which  is 
not  to  be  mine,  but  yours)  under  my 
name  ?  '  I  think  not.  Would  it  make 
any  difference  that,  instead  of  going 
to  a  private  individual,  he  invited  the 
public  to  become  proprietors  of  a 
business  upon  the  like  terms'?  On 
that  question  there  is,  I  do  not 
say  decision,  but  some  authority " 
(p.  688).  Stonebraker  v.  Stone- 
braker,  33  Md.  252-1870.  The  com- 
plainant, Henry  Stonebraker,  had 
long  manufactured  various  medicines 
and  preparations  that  were  wide!y 
known  as  "  Stonebraker's  "  medicines 
and  preparations.  Defendants  sub- 
sequently employed  Abraham  S. 
Stonebraker,  a  doctor,  and  the  brother 
of  the  complainant,  in  the  manufac- 
ture of  similar  preparations  which 
closely  resembled  those  of  complain- 
ant, and  were  sold  as  "  Dr.  Stone- 
braker's "  medicines  and  preparations. 
Wrappers  and  general  get-up  were 
imitated  in  various  ways,  and  circum- 
stances clearly  indicated  fraudulent 
intention.     Abraham  S.  Stonebraker 


152 


Unfair  Business  Competition. 


To  transfer  to  a  third  person  the  right  to  use  one's  surname 
when  one  knows  there  already  exist  business  names  containing 
that  surname,  which  will  be  injured  by  use  of  his  name  in  the 
same  line  of  business,  is  fraud  if  the  vendor  knew  of  the 
use  to  be  made  of  the  name  at  the  time  of  the  sale.52 

§  75.  Voluntary  Change  of  Personal  Name. —  By  comply- 
ing with  the  statutory  regulations  which  exist  in  most  states, 
a  person  may  change  his  name.  If  he  does  this  and  then  uses 
it  in  a  way  to  injure  the  business  of  another  who  bears  the 
name  the  first-mentioned  person  has  adopted,  an  injunction 
will  lie  restraining  the  use  of  the  adopted  name.53 


had,  for  a  short  time  only,  some 
years  before,  manufactured  some 
drugs  and  remedies  to  which  he  ap- 
plied his  name.  Held,  that  defend- 
ants were  not  entitled  so  to  use  the 
name;  injunction  granted. 

62  Ernest  M.  Burrow  v.  Theodore 
Marceau,  124  A.  D.  (N.  Y.)  665- 
1908;  109  N.  Y.  Supp.  105.  Napoleon 
Sarony  was  a  successful  New  York 
photographer  prior  to  November 
9,  1S96,  when  he  died.  October 
7,  1898,  Otto  Sarony,  his  executor, 
sold  to  plaintiff's  assignor  Sarony's 
business  with  the  trade-mark 
"  Sarony "  and  the  good-will  of  the 
business.  Later  this  executor  agreed 
with  Marceau  to  use  his,  Otto 
Sarony's  name,  or  any  part  of  it. 
Marceau  then  organized  the  Otto 
Sarony  Co.,  photographers  —  a  New 
York  corporation  in  which  Otto 
Sarony  owned  one  share  of  stock  — 
the  consideration  for  his  giving  the 
concern  the  right  to  use  his  name. 
Held,  "  The  object  of  this  transaction 
is  perfectly  apparent.  It  was  not  an 
attempt  of  a  man  to  transact  business 
in  his  own  name  or  to  transfer  to 
another  the  good-will  of  an  estab- 
lished business.  Otto  Sarony  did  not 
intend  to  go  into  business  using  his 


own  name.  *  *  *  The  only  ob- 
ject he  (Marceau)  could  have  was 
thus  to  secure  some  of  the  business 
of  the  plaintiff.  '  Sarony '  meant 
nothing  except  so  far  as  it  repre- 
sented the  reputation  or  skill  and 
artistic  merit  of  the  business  trans- 
acted under  that  name.  It  was  a 
fraud  if  the  defendant  represented 
that  this  company  was  either  the  suc- 
cessor of  the  business  and  methods 
established  by  Napoleon  Sarony,  or 
that  any  member  of  the  Sarony 
family  had  any  connection  with  it. 
It  was  a  fraud  upon  the  plaintiff,  in 
that  by  the  use  of  the  name  ;  Sarony/ 
it  indicated  that  the  Sarony  who  had 
established  the  business  known  to  the 
public  as  Sarony's  photographic  es- 
tablishment was  connected  with  it, 
and  it  was  a  fraud  for  Otto  Sarony 
to  make  such  an  agreement  with  the 
defendant  Marceau  when  he  had 
transferred  the  right  to  use  the  name 
of  Sarony  with  the  business  estab- 
lished by  Napoleon  Sarony  and  had 
received  consideration  therefor."  See 
also  chapter  on  Good-Will,  for  fur- 
ther discussion  of  this  question. 

"England  v.  N.  T.  Publishing  Co., 
8  Daly  (N.  Y.)  375-1878.  Henry 
Carter   came    from   England   to   the 


Family  Names  or  Surnames,  as  Trade  Names. 


153 


Arbitrary  adoption  of  a  family  name  as  a  business  name 
is  not  allowable  when  one  does  not  bear  that  name  and  another 
is  using  the  name  in  business.  The  court  will  presume  that 
such  an  act  is  done  with  fraudulent  intent.  It  is  unfair  for  a 
dealer  to  use  the  name  of  his  manager  as  a  trade  name  for  his 
business  or  goods  when  that  name  is  the  name  under  which  a 
competitor  carries  on  business.  The  fact  that  it  is  the  man- 
ager's name  will  not  excuse  such  an  act.54 

§  76.  Rights  Acquired  by  Him  who  First  Uses  a  Surname 
in  Business. —  The  first  appropriator  of  his  surname  as  a 
trade  name  may  adopt  the  name  alone,  without  any  accompany- 
ing word  or  symbol  by  way  of  prefix  or  suffix ;  and  if  he  does, 
manufacturers  of  like  goods  having  the  same  name  may  not 
use  it  upon  their  goods,  unless  they  accompany  it  by  such  dis- 
tinguishing devices  by  way  of  prefix  or  suffix,  that  a  buyer, 
who  takes  note  of  both  name  and  other  marks,  will  not  be 
deceived.     If   consumers  who  notice  nothing  but   the   name 


United  States,  took  for  his  name 
Frank  Leslie,  but  did  not  do  so 
legally,  and  published  various  period- 
icals known  as  "  Frank  Leslie's  "  and 
widely  circulated.  He  had  caused  his 
son  to  take  the  same  name  of  Frank 
Leslie,  and  he  was  christened  and 
married  under  that  name.  Subse- 
quently, influenced  by  threats  and 
misrepresentations  on  the  part  of  his 
father,  he  assumed  the  name  Henry 
Leslie,  although  still  known  as  Frank 
to  his  wife  and  various  friends. 
Afterward  he  resumed  the  name  of 
Frank,  and  the  defendant,  of  which 
he  was  one  of  the  incorporators,  be- 
gan to  publish  a  weekly  journal  en- 
titled "  Frank  Leslie,  Jr.'s  Sporting 
&  Dramatic  Times."  Neither  of  his 
father's  publications  dealt  especially 
with  sporting  or  dramatic  matters. 
Held  no  infringement.  F.  Pinet  et 
Cie.  v.  Maison  Louis  Pinet,  Ltd.,  15 
R.  P.  C.  65-1897;  see  also  s.  c.  14 
R.  P.  C.  933-1897.  Plaintiffs  had  a 
well-established  business  in  boots  and 


shoes,  and  their  goods  were  known 
as  "  Pinet "  boots  and  shoes.  The 
founder  of  the  defendant  company 
had  repeatedly  changed  his  name, 
and  finally  adopted  the  name  Pinet, 
and  the  company  formed  by  him  be- 
gan dealing  in  boots  and  shoes,  which 
they  advertised  as  "  Pinet's  Special 
Boots  and  Shoes,"  though  their  pros- 
pectus set  forth  that  they  had  no  con- 
nection with  F.  Pinet  et  Cie.,  of  Paris. 
Defendants  were  enjoined  from  using 
the  name  "  Pinet "  in  any  way  in 
their  business. 

"  Folk  v.  American  West  Indies 
Co.,  71  App.  Div.  (N.  Y.)  320-1902; 
75  N.  Y.  Supp.  964.  Plaintiff  used 
for  twenty  years  "  El  Falcon "  as 
the  name  of  a  cigar;  defendant 
adopted  name  "  El  Falco."  Fact  that 
defendant's  manager  was  named  G. 
Lopez  y  Falco,  when  he  did  not 
swear  he  was  known  by  that  full 
name,  will  not  permit  use  of  word 
by  defendant. 


154 


Unfair  Business  Competition. 


are  deceived  and  there  is  loss  to  either  in  consequence,  it  must 
be  borne  as  the  result  of  the  act  of  taking  a  family  name  as 
a  trade  name ;  but  if  the  first  appropriator  affixes  distinguish- 
ing figures  or  words  or  symbols  to  his  name,  the  second  may 
not  use  his  name  in  connection  with  the  same  marks,  figures, 
symbols  or  words,  nor  with  such  marks  as  so  resemble  those 
of  the  first  that  the  similarity  and  association  will  probably 
mislead.  This  rule  does  not  apply  where  the  defendant,  a 
corporation,  chooses  its  own  name  and  it  appears  that  the 
name  was  selected  with  an  intention  to  defraud.  There  the 
corporation  is  entitled  to  little  consideration,  for  there  is  no 
reason  for  incorporators  to  choose  a  name  likely  to  confuse, 
while  there  is  reason  for  an  individual  wishing  to  trade  under 
his  own  name.55     See  §  71. 


"Landreth  v.  Landreth,  22  Fed. 
41-1884  (C.  C.  E.  D.  Wis.).  Com- 
plainants, from  1873,  sold  peas  in 
bags  marked  in  blue  ink,  "  Guaran- 
teed to  Contain  Landreth's  Extra 
Early  Peas,  Provided  the  Seal  is  Un- 
broken," with  the  quantity  "  1-4 
Bus.",  and  the  year.  These  goods 
under  this  label  became  well  known 
to  the  trade  and  the  public.  In  1883, 
defendant  began  selling  peas  in  bags 
bearing  in  blue  ink,  the  inscription: 
"  This  Bag  Contains  Landreth's  Ex- 
tra Early  Peas.  Provided  the  Seal  is 
Unbroken  "  with  the  quantity  "  1-4 
Bus."  and  the  year.  Held,  that  al- 
though defendant  was  entitled  to  use 
his  own  name  and  pei'haps  the  phrase 
"  Landreth's  Early  P^?.s "  he  was 
bound  to  differentiate  his  label 
clearly,  in  arrangement  of  words 
and  general  appearance  from  com- 
plainant's. Preliminary  injunction 
granted.  Clark  Thread  Co.  v. 
Armitage,  67  Fed.  896-1895  (C. 
C.  S.  D.  N.  Y.),  affirmed  and 
modified  74  Fed.  896.  Complainant 
was  a  New  Jersey  corporation 
created  in  1865.  Defendant  was  man- 


ager of  "  William  Clark  Thread 
Company,"  which  was  organized  in 
New  Jersey  in  1S91,  and  sold  cotton 
thread  as  "Clark's  N-E-W  Spool 
Cotton."  Complainant  alleged  de- 
fendant was  putting  up  thread  in  a 
way  to  lead  purchasers  to  believe  that 
they  were  buying  a  new  brand  of 
the  complainant's  thread.  Defend- 
ant changed  his  name  to  "  The  Wil- 
liam Clark  Company."  "  The  chief 
incorporator  was  William  Clark.  He 
was  at  liberty  to  avail  himself  of 
whatever  reputation  he  had  gained  as 
a  thread  maker  while  in  the  employ 
of  the  complainant,  but  it  was  unlaw- 
ful for  him  so  to  act  that  the  public 
was  deceived  as  to  the  true  condition 
of  affairs."  The  use  of  his  name  to 
name  a  corporation  was  "  of  doubt- 
ful propriety  but  for  complainant's 
consent  "  (id.  p.  901).  The  court  was 
of  the  opinion  "  Clark's "  had  ac- 
quired a  secondary  meaning  relating 
to  thread  and  granted  injunction 
against  use  of  "  Clark  "  or  "  Clark's." 
Valentine  Meat  Juice  Co.  v.  The 
Valentine  Extract  Co.,  Ltd.,  83  L.  T. 
N.  S.  259-1900,  17  R.  P.  C.  673.  The 


Family  Names  or  Surnames,  as  Trade  Names. 


155 


§  77.  Family  Names  as  Corporate  Names. —  Family  names 
are  often  used  in  naming  corporations,  and  when  the  same 
family  name  is  used  in  two  corporations  confusion  and  injury 
usually  result.  Sometimes  this  is  the  result  of  intent,  some- 
times of  accident,  but  more  and  more  frequently  the  courts 
are  finding  some  means  of  preventing  the  use  of  these  corpo- 
rate names  in  such  manner  as  to  cause  fraud  and  deception. 
A  discussion  of  decisions  of  this  character  will  be  found  in  the 
chapter  on  Corporate  Names. 

§  78.  Rights  of  Descendants  to  the  Family  Name  as  Used 
in  Business  by  an  Ancestor. —  The  general  principle  is  that 
confusion  of  the  public  and  use  of  signs  and  advertisements 
calculated  to  make  the  public  think  one  concern  is  another 
or  its  successor,  is  no  sufficient  reason  for  taking  from  sons 
"  the  right  to  continue  the  business  to  which  they  were 
bred  and  to  use  their  own  name  in  doing  so. ' ' 56    So  strong  is 


plaintiffs  were  incorporated  in  Vir- 
ginia in  1871.  Their  product  had  been 
sold  under  some  name  of  which  the 
name  "  Valentine "  formed  a  part. 
Until  1898  no  other  preparation  con- 
nected with  the  name  of  Valentine 
was  on  the  market.  The  defendant  was 
incorporated  in  London,  1897.  It  was 
promoted  by  Charles  R.  Valentine. 
Its  product  was  first  sold  as  "  Valen- 
tine's Valtine  Meat  Globules,"  the 
word  Valtine  being  a  shortening 
of  word  Valentine.  Complainants 
alleged  that  defendants  used  the  word 
'■  Valentine  "  in  such  a  way  as  to  de- 
ceive the  public  into  the  belief  that 
the  goods  sold  by  the  defendants  were 
manufactured  by  the  plaintiff.  In- 
junction granted  against  the  use  of 
both  "  Valentine  "  and  "  Valtine." 

66  Donnell  v.  Herring-Hall-Marvin 
Safe  Co.,  208  U.  S.  267-74-1908. 
Duryea  v.  Manufacturing  Co.,  79 
Fed.  651;  25  C.  C.  A.  139.  One 
Duryea  and  his  brothers  were  the 
controlling  members  of  the  Glen  Cove 


Manufacturing  Company,  which  for 
a  long  time  made  and  sold  starch  in 
packages  having  thereon,  in  promi- 
nent letters,  "  Duryea's  Starch."  A 
picture  of  the  manufacturing  build- 
ings, together  with  the  name  of  the 
corporation,  also  appeared  on  the 
packages,  and  the  starch  and  the  cor- 
poration became  identified  with  the 
name.  Thereafter  the  business  was 
sold  to  another  corporation,  which 
continued  the  use  of  the  words  and 
pictures  with  its  own  name.  Duryea, 
having  subsequently  withdrawn  from 
the  company,  furnished  capital  to  his 
sons,  who  thereafter  procured  other 
starch  to  be  made  for  them,  and  sold 
it  as  starch  "  Prepared  by  Duryea  & 
Co.,"  etc.,  without  imitation  of  labels 
or  packages.  Held,  that  this  was  a 
proper  use  by  Duryea  and  his  sons 
of  their  own  name,  and  could  not  be 
enjoined.  See  also  National  Starch 
Mfg.  Co.  v.  Duryea,  101  Fed.  117- 
1900  (C.  C.  A.  2d  Cir.). 


156  Unfair  Business  Competition. 

this  right  that  a  nephew  who  bore  his  uncle's  exact  name 
could  not  object  to  its  use  by  another  nephew  who  did  not 
bear  the  uncle's  name  and  who  had  equal  right  to  the  name 
otherwise.57  The  individual  who  first  used  the  name  as  a  trade 
name  may  dispose  of  it  as  he  does  of  other  property  —  by 
will ;  and  if  he  leave  no  will,  it  is  dealt  with  by  law  as  a  part 
of  his  personal  property.  His  descendants  may  inherit  it. 
He  may  give  it  to  one  child  to  the  exclusion  of  all  the  others 
or  to  someone  entirely  outside  of  the  family,  to  the  exclusion 
of  all  its  members.  In  such  cases  it  has  been  held  that  no  one 
of  the  family  can  use  the  name  to  damage  or  injure  the  prop- 
erty of  him  who  has  acquired  it. 

A  person  may  dispose  of  the  right  to  use  his  name  as  a 
trade  name  in  connection  with  a  particular  article,  in  such  a 
way  as  to  prevent  his  children  from  using  the  name  in  selling 
that  article.  The  Supreme  Court  of  the  United  States  in  Don- 
nell v.  Herring-Hall-Marvin  Safe  Co.,58  has  held  that,  where 
a  father,  Hall  by  name,  did  business  under  a  corporate  name 
of  which  the  name  Hall  was  part,  and  the  corporation  and 
the  corporate  name  was  sold,  the  vendee  is  entitled  to  an  in- 
junction against  sons  of  said  Hall,  forbidding  use  of  "  any 
name,  mark,  or  advertisement,  indicating  that  the  plaintiff 
(the  son)  is  the  successor  of  the  original  company,  or  that  its 
goods  are  the  product  of  that  company  or  its  successors,  or 
interfering  with  the  good-will  brought  from  it"49 

57  Emerson  v.  Badger,  101  Mass.  82.  corporation    controlled   by   the    Hall 

68  208  U.  S.  267-74-1908.  family.    The  selling  corporation  was 

69  Citing  Howe  Scale  Co.  v.  WycJc-  dissolved,  and  Edward  C.  Hall  became 
off,  Seamans  &  Benedict,  198  U.  S.  the  president,  and  another  son  of  the 
118-1904;  49  L.  ed.  972;  25  Sup.  Ct.  founder  treasurer  of  the  new  com- 
609;  Singer  Mfg.  Co.  v.  June  Mfg.  pany,  under  contracts  by  which  their 
Co.,  163  TJ.  S.  169-1895;  41  L.  ed.  services  were  secured  for  a  certain 
118;  16  Sup.  Ct.  1002.  Donnell  v.  period.  Upon  the  termination  of 
Herring-Il all-Marvin  Safe  Co.,  208  these  contracts  the  two  sons  organ- 
U.  S.  267-1908  (Holmes,  J.).  The  ized  an  Ohio  corporation  to  engage 
Herring-Hall-Marvin  Safe  Company  in  a  competing  business  of  making 
was  formed  in  1892  to  take  over  an  safes.  Donnell  was  the  president  of 
old  business,  founded  by  Joseph  L.  an  Illinois  corporation,  the  Hall 
Hall,  of  making  safes,  which  had  be-  Safe  &  Lock  Company,  which,  al- 
come  well  known  as  "  Hall's  Safes,"  though  Donnell  had  been  the  selling 
the  business  being  transferred  bv  a  agent    of    the    Herring-Hall-Marvin 


Family  Names  or  Surnames,  as  Trade  Names.  157 

In  the  case  of  Herring-H  all-Marvin  Safe  Co.  v.  Hall's  Safe 
€o.,G0  a  contract  of  sale  specified  that  along  with  the  plant, 
patterns,  stock  of  safes,  accounts,  papers,  etc.,  it  was  intended 
to  convey  all  "  trade-marks,  patent  rights,  trade  rights,  good- 
will, and  all  its  property  and  assets  of  every  name  and  na- 
ture," and  agrees  that  the  business  "  is  taken  over  in  all  re- 
spects as  a  going  concern. ' '  The  question  was  as  to  the  rights 
of  sons  of  the  original  Hall,  who  founded  the  Hall  business 
and  the  reputation  enjoyed  by  "  Hall's  Safes."  Held,  that  the 
"  Hall's  Safe  &  Lock  Co.,"  a  corporation  founded  by  Hall 
(the  stock  of  which  belonged  to  his  children  and  estate), 
achieved  what  reputation  the  name  Hall  enjoyed.  The  good- 
will belonged  to  that  company.  The  sons,  by  this  transfer,  did 
not  lose  the  right  to  use  the  name  Hall  in  the  safe  business, 
if  used  with  proper  explanations  accompanying  their  every  use 
of  it.  An  absolute  prohibition  against  using  the  name  Hall,  it 
was  held,  would  carry  trade-marks  too  far.  Therefore,  the 
rights  of  the  two  parties  have  been  reconciled  by  allowing 
the  use,  provided  that  an  explanation  is  attached.  The  sons 
might  have  left  the  old  company  and  set  up  for  themselves. 
"  They  might  have  competed  with  it  (the  old  company) ;  they 
might  have  called  attention  to  the  fact  that  they  were  the  sons 
of  the  man  who  started  the  business ;  they  might  have  claimed 
their  due  share,  if  any,  of  the  merit  in  making  Hall's  Safes 
what  they  were,61  but  they  would  have  been  at  the  disadvantage 
that  some  names  and  phrases,  otherwise  truthful  and  natural 

Company,    now   began   at   the   same  made    by    the    Herring-Hall-Marvin 

place  and  with  the  old  sign,  "  Hall's  Company.     It  does  not  appear  very 

Safes,"    to   sell   the   safes   made  by  specifically  just  what  use  of  the  name 

the  competing  Ohio  company  organ-  the  court  would  have  deemed  admis- 

ized   by   the   two    sons.     Held,   that  sible.    The  decree  below  had  enjoined 

these  sons  and  the  company  formed  the  marking  or  advertising  of  safes, 

by  them  had  the  right  to  use  the  name  or  the  carrying  on  of  business,  with 

"  Hall  "     in     connection    with    their  or  under  any  name  of  which  the  word 

business  and  in  describing  their  safes,  "  Hall  "  was  a  part.    This  decree  was 

subject  to  the  duty  not  to  mislead  the  reversed. 

public   by   the   form    of    any   name,  eo  208  U.  S.  554-1908. 

sign,    mark,    or    advertisement,    into  61  White  v.  Trowbridge,  216  Pa.  St. 

supposing  them  to  be  successors  to  11;  64  Atl.  862. 
the  old  business,  or  their  safes  to  be 


158 


Unfair  Business  Competition. 


to  use,  would  convey  to  the  public  the  notion  that  they  were 
continuing  the  business  done  by  the  company  or  that  they  were 
in  some  privity  with  the  established  manufacture  of  safes 
which  the  public  already  knew  and  liked.  To  convey  such  a 
notion  would  be  fraud  and  would  be  stopped.  Therefore,  such 
names  and  phrases  could  be  used  only  if  so  explained  that 
they  would  not  deceive  "  c2  (id.  p.  559).  It  has  been  held  that  the 


82  Hardy   v.    Cutter,   3   U.    S.   Pat. 
Gaz.  468-1873  (as  cited  at  16  Phila. 

182).  Plaintiffs  manufactured  "  Cut- 
ter's Whiskey,"  as  successors,  by 
purchase,  of  J.  H.  Cutter,  and 
branded  their  barrels  "  J.  H.  Cutter 
—  Old  Bourbon."  Defendant,  a  son 
of  J.  H.  Cutter,  also  manufactured 
whiskey,  marking  it  "  J.  F.  Cutter,  son 
of  the  late  J.  H.  Cutter,"  etc.  The 
marks  resembled  each  other  only  in 
the  use  of  the  name  "  Cutter."  Held, 
that  defendant  was  entitled  to  use 
his  own  name  in  this  way;  injunc- 
tion denied.  Van  Stan's  Stratena  Co. 
Ltd.  v.  Van  Stan,  209  Pa.  St.  564- 
1904;  58  Atl.  1064.  Frederick  Van 
Stan  had  invented  a  peculiar  kind  of 
cement  which,  for  some  time  prior  to 
1876,  he  had  manufactured  and  sold 
in  England  as  "  Van  Stan's  Stratena 
Co.  Cement."  In  1876  he  transferred 
to  one,  who,  in  1878,  assigned  to 
plaintiff  the  sole  right  to  make  and 
sell  the  cement  in  the  United  States, 
with  the  use  of  the  name  and  trade- 
mark. In  18S9  defendant,  Victor  F. 
Van  Stan,  a  son  of  Frederick  Van 
Stan,  came  to  the  United  States,  was 
employed  for  some  years  by  plaintiff, 
and  became  familiar  with  the  business 
and  the  customers.  He  left  plaintiff's 
employ  and,  after  an  interval,  re- 
turned to  Philadelphia,  where  he  be- 
gan selling  an  article  labeled  "  Vic- 
tor F.  Van  Stan's  Cementive "  and 
sometimes  advertised  as  "  Van  Stan's 
Improved    Cement."      His    circulars, 


labels,  and  wrappers  were  in  various 
ways  misleading.  Held,  that  defend- 
ant was  not  entitled  thus  to  use  his 
own  name  in  describing  and  advertis- 
ing his  cement.  Citing  Russia  Cement 
Co.  v.  LePage,  147  Mass.  206 ;  17  N. 
E.  304,  and  other  cases.  Robinson  v. 
Storm,  103  Tenn.  40-1899;  52  S.  W. 
880.  In  ]S72  Dr.  Mitchell  prepared 
a  cathartic  formula  which  he  put  into 
the  hands  of  Stever  &  Robinson, 
druggists,  to  perfect  so  as  to  make 
it  palatable.  Dr.  Mitchell  claimed  no 
interest  in  the  formula.  He  pre- 
scribed it,  soon  after  he  invented  it, 
for  Captain  Storm,  a  citizen  of  wide 
influence,  wTho  recommended  it  so 
generally  that  it  soon  acquired  a  wide 
reputation.  Stever  &  Robinson,  with 
his  consent,  then  put  it  up  and  sold 
it  as  "  Storm's  Liver  Regulator,"  out 
of  compliment  to  Captain  Storm.  In 
1873  Robinson  bought  out  Stever  and 
became  sole  owner  of  the  formula. 
Captain  Storm  died,  and  his  child, 
the  defendant,  asked  Dr.  Mitchell  to 
aid  him  to  acquire  the  formula  that 
he  might  sell  the  medicine.  The  doc- 
tor declined.  He  then  obtained  an- 
other formula,  which  he  put  on  the 
market  as  "  Storm's  Liver  Regula- 
tor." Both  labels  have  the  catch 
words  "  Storm's  Liver  Regulator;" 
the  bottles  are  of  same  general  shape, 
the  neck  of  defendant's  bottles  being 
a  little  longer  than  those  of  plain- 
tiff's.    The  recommendations  on  each 


Family  Names  or  Surnames,  as  Trade  Names. 


159 


fact  that  there  was  no  person  by  the  name  of  Chickering  con- 
nected with  the  concern  making  Chickering  pianos  in  Boston, 
gave  no  right  to  other  persons  who  bore  the  same  name,  to 
set  up  a  piano  business  and  hold  themselves  out  as  being  the 
only  Chickerings  making  pianos,  thus  giving  the  impression 
that  they  were  the  rightful  heirs  of  and  successors  to  the 
name.63 

Similarly,  an  injunction  has  been  granted  forbidding  a  son 
from  selling  goods  under  the  family  surname  when  the  father 
was  using  the  name  in  the  same  business.  This  was  the  de- 
cision in  Gouraud  v.  Trust,**  where  the  defendants  were  sons 
of  the  plaintiff  and  plaintiff  had  been  long  engaged  in  selling 
a  cosmetic  called  "  T.  Felix  Gouraud 's  Oriental  Cream  and 


bottle  are  not  exactly  the  same,  but 
similar.  The  cartons  vary  in  color, 
but  not  enough  to  place  purchasers 
on  guard.  On  both  cartons  and 
labels  the  word  "  Storm's "  is  very 
prominent.  Complainant's  carton 
bad  mortar  and  pestle,  surrounded 
by  black  rim  and  words  "  Storm's," 
u  Only  the  best,"  and  "  Prepared  by 
Jas.  S.  Robinson,  Apothecary,  Mem- 
phis, Tenn."  Defendant's  carton  had 
picture  of  Captain  Storm  and  words 
u  Storm's  Liver  Regulator,"  and 
"  Prepared  by  eminent  chemists  for 
A.  G.  Storm,"  and  "  This  is  not  the 
medicine  put  up  by  James  S.  Robin- 
son," and  in  this  the  word  "  Robin- 
son "  is  prominent.  Held,  it  is  suffi- 
cient that  between  the  two  labels  there 
is  a  simulation  "  likely  to  deceive  an 
incautious  and  ordinary  purchaser." 
Decree  forbade  use  of  the  words 
"Storm,"  "Captain  Storm,"  and 
"  Storm "  in  connection  with  words 
"  Liver  Regulator,"  and  also  the  use 
of  the  description  of  how  the  medi- 
cine came  into  use,  and  Robinson's 
name  on  bottles,  etc.,  and  also  forbade 
the  use  of  Robinson's  formula,  etc. 


43  Chickering  v.  Chickering  &  Sons, 
120  Fed.  69-1903  (C.  C.  A.  7th  Cir.). 
Two  men  named  Chickering  set  up 
business  in  Chicago  for  manufacture 
of  pianos.  Chickering  &  Sons  were 
in  same  business  in  Boston  and  had 
been  since  death  of  last  Chickering 
connected  with  said  company  some 
years  before.  Defendants  advertised  a 
sketch  of  Chickering  family  and  their 
"  famous  piano,"  concluding  with  this 
statement :  "  By  right  of  purchase 
this  name  will  continue  to  be  used 
on  the  Boston  Piano,  but  by  reason 
of  their  kinship  and  because  of  their 
long  practical  training  under  the 
'  Chickering  System '  the  fact  is 
j)roperly  advanced  that  '  the  only 
piano  made  by  a  Chickering '  is  now 
made  in  Chicago  by  Chickering 
Brothers."  The  expression  "  The 
only  piano  made  by  a  Chickering " 
was  cast  into  their  piano  frames  and 
inserted  in  their  catalogues.  Held, 
that  injunction  was  properly  granted 
restraining  use  of  word  Chickering 
on  ground  of  unfair  competition. 

64  6  Thomps.  &  Cook  (N.  Y.)  133- 
1875. 


1G0 


Unfair  Business  Competition-. 


Magical  Beautifier."     Defendants  began  to  make  a  cosmetic 
they  called  "  Creme  Oriental  by  Dr.  T.  F.  Gouraud's  Sons." 

If  a  widow  continues  a  business  belonging  to  the  decc. 
husband,  it  seems  she  cannot  transfer  the  exclusive  right  to 
use  the  father's  name  to  one  of  her  sons  to  the  exclusion  of 
others,  for  all  the  children  had  equal  rights  to  the  use  of  the 
name.65 

The  North  Carolina  courts  have  held  that  descendants  of 
one  Bingham,  who  established  a  "  Bingham  School  "  at  Me- 
bane,  N.  C,  can  continue  the  school  although  another  school 
called  "  Bingham  School  "  had  been  established  at  Asheville; 
but  that  both  schools  could  use  the  name  because  no  confusion 
could  arise  as  the  schools  are  not  in  the  same  locality.06  Ball 
v.  Best*7  had  distinctly  held  such  doctrine  error,  and  it  seems 
with  good  reason ;  for  while  no  doubt  in  years  past,  confusion 
would  be  quite  unlikely,  under  modern  conditions  of  easy  com- 
munication and  in  view  of  the  facilities  of  publicity  offered  by 


65  Marshall  v.  Pinkham,  52  Wis. 
572-18S1 ;  9  N.  W.  615. 

66  Bingham  School  v.  Gray,  122  N. 
C.  699-1898;  41  L.  R.  A.  243;  30 
S.  E.  304.  The  Bingham  School  was 
established  in  1793  by  one  Wm. 
Bingham,  and  in  1864  was  incorpo- 
rated as  The  Bingham  School.  The 
charter  provided :  "  Nothing  herein 
contained  shall  prejudice  the  original 
and  ultimate  right  of  property  in 
the  name  of  said  school  pertaining  to 
William  Bingham  as  representative 
of  the  name  and  reputation  of  the 
school."  The  charter  having  expired 
Robt.  Bingham  had  it  again  incorpo- 
rated in  1895.  In  1875  Wm.  Bing- 
ham died,  left  all  his  property  to 
widow  for  life,  then  to  children.  De- 
fendants are  his  widow  and  children, 
who  are  now  conducting  a  school  at 
Mebane,  N.  C,  (site  of  old  school) 
under  name  "  William  Bingham 
School,"  and  claim  it  was  organized 
in  1793  and  conducted  by  the  Bing- 


hams  since,  and  they  have  right  to 
name  Bingham  School.  Held,  as  de- 
fendants are  widow  and  children  of 
Wm.  Bingham,  and  are  on  site  of  old 
school,  they  can  use  words  "  Bing- 
ham School "  or  "  Wm.  Bingham 
School."  "That  the  plaintiff  is  in- 
corporated as  the  '  Bingham  School ' 
does  not  give  it  the  exclusive  right  to 
that  name ;  another  corporation  might 
be  created  by  and  operated  under  the 
same  title,  when  not  in  the  same  lo- 
cality, in  the  absence  of  an  intent  to 
injure  the  first  named  corporation 
or  to  avail  itself  fraudulently  of  the 
other's  good  name  and  reputation." 
Citing  Farmers'  Loan  &  Trust  Co.  v. 
Farmers'  Loan  <£■  Trust  Co.  of  Kan- 
sas, 1  N.  Y.  Supp.  44-188S;  21  Abb. 
N.  C.  104.  "  Certainly  there  could 
be  no  confusion  between  a  Bingham 
School  at  Asheville  and  one  at  Me- 
bane "  (id.  p.  707).  Injunction  denied. 
67 135  Fed.  434-1905  (C.  C.  111.). 


Family  Names  or  Surnames,  as  Trade  Names.  161 

newspapers  and  periodicals,  one  of  these  schools  might  easily 
avail  itself  of  the  reputation  of  the  other  in  the  minds  of  the 
persons  not  familiar  with  local  history  and  conditions. 

The  right  of  a  son  to  use  his  father's  name  and  just  how 
this  right  is  curtailed  by  equity  is  shown  in  Frazier  v. 
Dowling.™  Waterfill  and  Frazier  (father  of  plaintiff)  made 
"  Waterfill  and  Frazier  Whiskey."  Frazier  died.  Appellees 
came  into  control  of  his  business.  Frazier 's  son  then  formed 
a  partnership  with  J.  W.  Waterfill,  a  cousin  of  his  father's 
partner,  to  distill  whiskey  in  another  county.  They  marked 
their  whiskey  in  various  ways  and  finally  began  to  mark  it 
"  Waterfill  and  Frazier,  Distillers,  etc.,"  the  exact  label  of  the 
old  firm,  and  were  enjoined  from  using  this  brand.  Held, 
"  that  this  combination  did  not  represent  the  name  of  either 
of  the  partners  in  the  new  firm.  If  the  sole  object  in  using 
this  combination  was  to  tell  the  truth  it  does  not  do  so  any 
more  than  *  *  *  "  G.  G.  Frazier  &  Co.,"  or  "  J.  M.  Water- 
fill  &  Co.,"  both  of  which  names  this  new  firm  discarded. 

Here,  then,  was  an  evident  attempt  by  descendants  to  use  a 
right  to  a  father's  name  and  a  family  name  for  the  purpose 
of  passing  themselves  off  as  persons  they  were  not,  as  owning 
and  carrying  on  a  business  they  did  not  own  and  did  not 
carry  on.  This  question  of  Rights  of  Descendants  is  consid- 
ered in  the  chapter  on  Transfer. 

§  79.  Summary. —  Speaking  generally,  it  may  be  said  that 
the  usual  rules  as  to  the  tests  of  unfair  competition  apply  to 
use  of  family  names.  The  resemblance  between  two  similar 
labels  appeals  to  the  eye ;  a  family  name  used  as  a  trade  name 
or  part  of  a  trade  name  appeals  to  the  ear.  The  general  look 
of  a  label,  the  "  tout  ensemble,"  as  Judge  Brewer  calls  it  in 
Lorillard  v.  Peper,09  is  what  the  public  remembers.  It  is  the 
name  in  common  use,  the  nickname,  if  you  will,  not  its  full 
name,  that  becomes  the  real  name  —  for  instance,  "  Baker 
Chocolate,"  not  "Walter  Baker  &  Co.'s  Chocolate,"  becomes 
known  to  the  public  by  advertising  and  by  the  merits  of  the 
goods,  and  purchasers  remember  that  name.     For  Wm.  H. 

M39   S.   W.   45-1897;   18  Ky.   L.         " 86  Fed.  956-1898  (at  p.  960). 
Rep.  1109. 

11 


1G2  Unfair  Business  Competition. 

Baker  to  sell  chocolate  as  "  Baker's  Chocolate  "  was  to  com- 
mit a  fraud  on  Walter  Baker  &  Co.  The  name  used  by  the 
defendant  may  be  almost  an  exact  counterpart  of  that  of  the 
complainant,  and  yet  no  unfair  competition  results.70  Again 
there  may  be  many  points  of  difference  between  them  and  yet 
the  use  of  the  defendant's  name  will  be  unfair.  As  for  in- 
stance "  Dr.  Bull's  Cough  Syrup  "  was  infringed  by  "  Dr. 
B.  L.  Bull's  Celebrated  Cough  Syrup." 

70  Brown    Chemical    Co.   v.   Meyer,   139  U.  S.  540-1890;  35  L.  ed.  247; 
11  Sup.  Ct.  625. 


CHAPTER  VII. 

Miscellaneous  Business  Names. 

Section  80.  Introductory. 

81.  Business  names  as  distinguished  from  marks,  designs,  devices,  etc. 

82.  Difference     between    abstract    names    of    objects    and   business 

names. 

83.  Secondary  or  acquired  meaning. 

84.  Secondary  meaning  of  semi-geographic  names  such  as  "  Empire 

State,"  "  Hoosier,"  etc. 

85.  Geographic  limits  in  which  secondary  meaning  becomes  known. 

86.  Existence  of  secondary  meaning  a  question  of  fact. 

87.  Names  of  goods  intended  for  export. 

88.  Lord  Kay's  summary  of  the  law  of  names. 

89.  Names  considered  as  transitory  or  personal,  and  as  local  or  fixed. 

90.  Phrases  such  as  "  Formerly  with,"  and  "  Successor  to,"  etc. 

91.  Signs. 

92.  Street  addresses,  etc. 

93.  Use  of  suffix  "  &  Co.,"  etc. 

94.  Names  of  newspapers  and  magazines. 

95.  Names  of  plays,  books,  text-books,  etc. 

§  80.  Introductory. —  The  name  of  a  thing  and  the  thing 
itself  are  hardly  distinguishable.  It  is  seldom  that  they  can 
be  separated.  Injure  one  and  the  other  suffers.  Lower  the 
quality  of  the  goods  themselves  and  the  name  becomes  less 
valuable.  Apply  the  name  to  some  similar  but  inferior  article 
or  to  some  different  article  of  ill  repute,  and  the  value  of  the 
name  becomes  materially  less.  Trade  names  frequently  are 
guarded  with  as  zealous  care  as  a  name  of  a  family.  They 
may  be  libeled  and  slandered,  misused  and  discredited  just 
as  personal  names  are  libeled  and  misused. 

With  the  growth  of  trade,  with  the  increase  of  transportation 
facilities,  with  the  multiplication  of  means  of  making  an 
article  of  trade  known  to  the  public,  and  equally  with  the 
multiplication  of  methods  of  quickly  injuring  its  reputation, 
the  law  which  governs  the  protection  given  to  trade  names  has 
become  more  explicit  and  more  fully  denned.  Underneath  all 
this  development,  however,  lies  the  same  principle  —  so  often 

[1(13] 


1C-4-  r.xi'Au;  Business  Competition. 

referred  to  before,  that  one  must  not  pass  off  his  goods  as 
those  of  another  —  must  not  use  his  trade  name  in  such  a  way 
as  to  give  the  impression  that  it  is  the  trade  name  of  another. 

§  81.  Business  Names  as  Distinguished  from  Marks,  Designs, 
Devices,  Etc. —  It  is  to  be  remembered  that  trade  names 
differ  from  tv<xde-marks  and  trade  designs  and  devices. 
The  exclusive  right  to  use  a  trade  name  imposes  upon  com- 
petitors a  more  burdensome  restriction  than  the  right  to  use 
a  mark.  It  is  not  unreasonable  to  say  to  traders  that  they 
shall  not  imitate  an  arbitrary  mark  or  device  adopted  by  one 
of  them ;  but  to  say  to  a  person  that  he  shall  not  use  his  own 
family  name  is  quite  a  different  matter.  To  do  that  is  to  claim 
a  monopoly  of  a  name  to  the  use  of  which  others  may 
have  an  equal  right.  Accordingly,  various  limits  have  been 
set  to  the  right  to  exclude  others  from  the  use  of  words  and 
names  in  designating  goods,  while  like  limits  have  not  been 
imposed  as  to  the  use  of  marks,  designs,  and  devices.  It  would 
obviously  be  unjust,  for  instance,  to  forbid  a  man  the  use  of 
his  own  name  in  trade,  when  no  fraud  or  damage  to  others' 
rights  arising  therefrom  was  shown. 

Again,  a  name  of  a  business  or  of  an  article  of  trade  gives 
more  information  than  a  mark.  A  name  tells  either  the  name 
of  the  maker  or  seller  of  goods  or  the  place  of  manufacture 
or  the  locality  of  a  business,  perhaps  all  of  these  facts,  while 
a  mark  indicates  these  and  similar  facts  usually  by  association 
only.  Failure  to  understand  and  observe  this  difference  be- 
tween a  trade-mark  and  a  trade  name  is  often  the  cause  of 
unfair  competition.  There  is  no  question  that  a  mark  which 
has  been  lawfully  chosen  and  appropriated  to  the  use  of  one 
person  is  property;  but  it  is  not  always  easy  to  know  whether 
or  not  one  has  rights  in  a  trade  name  he  is  using,  sufficient 
to  entitle  him  to  protection  in  the  sole  use  of  the  name.  It 
may  be  a  general  name,  which  cannot  be  appropriated  under 
ordinary  circumstances,  and  yet  his  business  enterprise  may 
have  caused  the  public  to  associate  that  name,  when  used  in 
trade,  with  his  business  alone.  Under  such  conditions  is  the 
name  property?  Can  an  action  for  unfair  competition  be 
sustained? 


Miscellaneous  Business  Names.  165 

§  82.  Difference  Between  Abstract  Names  of  Objects  and 
Business  Names. —  A  trade  name  is  to  be  distinguished  rrom 
the  abstract  or  general  name  of  the  article.  When  an  article 
first  becomes  known,  it  is  without  a  name  and  must  be  as- 
sociated with  a  word, —  must  be  named  —  christened.  That 
name  thus  given  everyone  has  a  right  to  use,  for  it  is  by  this 
name  only  that  it  can  be  known,  dealt  in  and  designated.  A 
new  metal,  for  example,  is  discovered.  It  must  be  given  a 
name,  and  the  inventor  or  someone  else  calls  it  aluminum  and 
straightway  that  is  its  name.  Everyone  has  a  right  to  use 
that  name;  for  it  would  be  entirely  against  public  policy  and 
individual  rights  to  allow  any  one  person  to  obtain  a  monopoly 
of  this  general  or  generic  name. 

On  the  other  hand,  a  business  or  trade  name  is  one  that 
can  be  adopted  by  one  person  as  a  name  identified  only 
with  his  particular  goods  or  concern,  a  name,  in  other  words, 
which  is  "  appropriatable  "  by  one  person.  This  distinction  is 
important  because  frequently  the  attempt  is  made  to  defend 
a  right  to  use  a  general  name  as  applied  only  to  one  person's 
goods.    See  §  150. 

§  83.  Secondary  or  Acquired  Meaning. —  At  first  thought, 
it  would  seem  that  the  courts  could  have  no  power  to  restrain 
anyone  from  using  one  of  these  abstract  names.  But  more  and 
more  frequently  we  are  seeing  instances  of  such  interference 
by  injunction,  on  the  ground  of  unfair  competition.  One  has 
an  absolute  right,  in  one  sense,  to  use  his  own  family  name, 
regardless  of  others,  and  yet,  if  he  uses  it  fraudulently  so  as  to 
injure  others,  or  to  attract  custom  from  another  bearer  of  it, 
he  may  be  restrained.1  In  such  cases  the  general  or  abstract 
word  or  name  has  come  to  have  a  secondary  meaning;  has 
acquired  by  usage  generally,  some  peculiar,  artificial,  unex- 
pected meaning,  in  which  meaning  the  complainant  possesses 
some  especial  property  right.  The  question  in  all  of  these 
cases  dealing  with  secondary  meaning  of  words  and  names  is 
whether  or  not  the  defendants,  by  their  misrepresentation, 

1  Cady   v.   Scludtz,   19   R.   I.   193-      Meaning  of  Family  Names  at   §  69 
1895;  32  All.  915;  29  L.  R.  A.  524.      supra,  and  §§  112-17. 
See    also    discussion    of    Secondary 


1GG  Unfair  Business  Competition. 

have  sought  to  prevail  on  purchasers  to  buy  their  goods,  be- 
lieving that  they  were  getting  the  goods  made  by  the  plaintiff. 
Of  course  if  the  defendant  used  direct  misrepresentation,  the 
plaintiff's  remedy  is  plain.  But  when  the  proof  shows 
merely  a  representation  by  the  defendant  which  consists  in 
the  using  of  a  term  which  describes  accurately  the  goods  in 
question,  it  must  be  a  precedent  condition  to  plaintiff's  success, 
that  he  prove  that  the  term  in  question  no  longer  has  its  evi- 
dent, usual  meaning,  but  has  come  to  have  the  secondary  and 
further  meaning  that  these  goods  are  the  particular  goods 
made  by  the  plaintiff,  and  that  the  public  understands  this 
name  to  refer  only  to  goods  made  by  the  plaintiff.  Unless 
this  be  proven  the  defendants  are  not  in  the  wrong,  for  they 
are  merely  using  a  name  to  which  they  have  as  much  right  as 
have  the  plaintiffs,  and  there  is  no  room  for  any  charge  of  fraud 
or  unfairness;  for,  as  we  have  said  above,  it  is  a  public  right  to 
apply  to  an  object  a  word  by  which  it  may  be  known  and  it  is 
everyone's  privilege  to  employ  that  word  as  the  name  of  that 
object  at  will.2 

Names  which  are  adopted  because  of  a  similarity  in  sound 
to  a  rival's  name  are  applied  in  most  instances  to  goods,  and 
the  rules  regarding  them  are  discussed  in  the  chapter  on 
Names  of  Articles  of  Merchandise,  under  head  of  "  Names 
Idem  Sonans." 

Well-known  and  authoritative  decisions  on  the  question  of 
how  far  courts  will  depart  from  the  rule  that  general  and 
generic  names  are  public  property,  to  protect  a  trader  from 
unfair  competition,  are  found  in  the  Beddaway  cases.  The 
most  important  of  these  is  Reddaway  v.  Banham,3  a  House  of 
Lords  case.  They  involve  the  right  to  use  the  name  of  a 
belting  called  "  Camel  Hair  Belting."  It  was  made  largely  of 
camel's  hair,  although  it  was  not  at  first  generally  known  that 
such  was  the  fact.  At  the  first,  this  "  camel's  hair  "  was 
supposed  to  be  a  mixture  of  the  hair  of  sheep,  goats,  and 
various  eastern  animals  in  which  hair  of  camels  might  be 
found;   but  which   did  not  pretend   to   be  all   camel's  hair. 

2  Cellular  Clothing  Co.  Ltd,  v.  Max  ton  &  Murray,  App.  Cas.  326-1899. 


Miscellaneous  Business  Names.  167 

Formerly  the  yarn  of  which  the  belting  was  made  was  sold 
simply  as  brown  worsted.  Other  makers  made  belting  of 
camel's  hair,  which  they  called  by  names  of  animals  such  as 
yah,  buffalo,  llama,  crocodile,  etc.  On  the  trial  a  letter  was 
put  in  evidence  in  which  a  salesman  wrote :  "I  think  I  can 
take  this  order  from  '  Reddaway's  '  if  the  goods  are  marked 
'  Camel  Hair  Beltiug.'  "  There  was  ample  evidence  to  show, 
says  the  court,  that  purchasers  did  not  apply  this  name  to  all 
goods  made  of  camel  hair  but  to  Reddaway's  goods  only. 
Lord  Herschell  said  in  the  House  of  Lords:  "  The  name  of 
a  person,  or  words  forming  a  part  of  the  common  stock  of 
language,  may  become  so  far  associated  with  the  goods  of  a 
particular  maker  that  it  is  capable  of  proof  that  the  use  of 
them  by  themselves,  without  explanation  or  qualification,  by 
another  manufacturer  would  deceive  a  i^urchaser  into  the 
belief  that  he  was  getting  the  goods  of  A.  when  he  was  really 
getting  the  goods  of  B."     (id.  p.  210.) 

There  is  a  sort  of  substitution  of  names  that  is  the  basis 
of  one  sort  of  the  secondary  meaning  sometimes  acquired  by 
names.  Faulder  makes  "  Silverpan  "  jam.  In  the  course  of 
time,  the  word  Faulder  is  lost  to  the  knowledge  of  the  public 
in  connection  with  the  jam  and  "  Silverpan  "  comes  to  mean 
not  only  the  jam  made  only  by  Faulder  but  also  becomes  the 
name  of  his  works  and  his  company,  and  he  receives  mail  ad- 
dressed to  the  "  Silverpan  Works,"  and  to  the  "  Silverpan 
Company."  If  this  mail  be  directed  to  and  opened  by  a  rival 
using  the  words  "  Silver  Pan,"  Faulder  suffers  loss  of  busi- 
ness which  is  legitimately  his.  And  this  is  so,  although  a 
person  who  buys  the  imitation  article  because  of  the  resem- 
blance between  "  Silverpan  "  and  "  Silver  Pan,"  never  heard 
of  the  name  Faulder  &  Co.,  Ltd.,  and  did  not  know  they  mad© 
this  brand  of  jam.4 

3  App.  Cas.  199-1896.  silvered  or  silver-lined  jars,  and  be- 

*  Faulder  &   Co.  Ltd.  v.   0.  &   G.  gan   to    call   their    product    "  Silver- 

Rushton,  Ltd.,  20  R.  P.  C.  477-1902.  pan  "   and   sell  it   under  that   name. 

Plaintiffs    made    jam    at    Stockport,  Defendants  issued  a  circular  contain- 

Chester.      Defendants    were    grocers,  ing  these  words :     "A  2  lb.  Jar  Sil- 

twenty-three    miles    away.      In    1S86  verwell  —  Silver      Pan      Strawberry 

plaintiffs  began  to  boil  their  jam  in  10 1/2    d.    0.    &   G.    Rushton,    Ltd." 


1G8 


Unfair  Business  Competition. 


To  support  an  allegation  that  a  name  has  acquired  a  second- 
ary meaning,  it  has  been  held  there  must  be  shown  (1)  identifi- 
cation of  name  with  plaintiff;  (2)  recognition  in  the  locality 


Plaintiffs  claimed  secondary  meaning 
for  word  "  Silverpan."  They  had 
used  it  since  1887;  had  spent  £12,000 
in  advertising.  Nine  thousand  copies 
of  "  The  Mail  "  circulated  in  the  dis- 
trict where  defendants  carried  on 
business,  and  plaintiffs  often  adver- 
tised "  Silverpan  "  jams  in  that  pa- 
per and  two  others  in  the  neighbor- 
hood, and  1,000,000  circulars  were 
said  to  have  been  used.  Letters  were 
addressed  to  plaintiff  at  "  Silverpan 
Works,"  "  The  Silverpan  Company," 
by  customers  when  ordering  goods, 
and  "Silverpan"  jam.  Held:  "If 
a  man  is  accustomed  to  buy  a  certain 
brand  which  has  become  a  catch- 
word, very  often  he  forgets  the  name 
of  the  maker.  He  might  remember 
jam  that  he  bought,  which  was  un- 
doubtedly Faulder  &  Co.'s  jam,  and, 
wishing  to  get  the  same  jam  again, 
in  asking  for  '  Silverpan  '  he  would 
buy  it  in  the  expectation  of  getting 
the  same  brand,  that  is  Faulder's 
brand;  therefore  I  am  not  at  all  sure 
it  was  absolutely  necessary  that  a 
person  asking  for  '  Silverpan  '  should 
have  in  mind  also  the  name  of 
Faulder"  (id.  p.  485).  Held,  "Sil- 
verpan "  had  acquired  a  secondary 
meaning  and  meant  Faulder's  jam. 
Defendants'  circular  broke  the  word 
into  two  —  "  silver  "  and  "  pan." 
Held,  that  the  substance  was  "  Sil- 
verpan," and  this  would  not  excuse 
their  use  of  the  word.  Defendants 
put  the  word  in  inverted  commas,  as 
they  claimed,  to  attract  attention. 
Held  it  meant  quotation.     The  plain- 


tiffs are  not  bound  to  prove  that 
when  the  defendant  put  lliose 
words  (Silver  Pan)  in  he  intended 
to  deceive.  "  It  is  enough  that  he  put 
them  there.  *  *  *  Whether  it  was 
intentional  or  whether  it  surged  up  in 
his  mind  as  a  kind  of  unconscious 
cerebration,  he  got  the  idea  ulti- 
mately from  Faulders  "  (id.  p.  489). 
Injunction  granted.  Decision  upheld 
on  appeal,  where  Vaughan- Williams 
stated  that  it  was  necessary  (1)  to 
show  proof  of  identification  of  word 
"  Silverpan "  with  plaintiff's  firm, 
and  (2)  this  identification  is  recog- 
nized in  district  where  defendant  is 
located,  but  not  by  everyone  in  the 
district  (p.  492),  and  Romer,  L.  J., 
said :  "  Of  course  I  do  not  mean  that 
in  every  town  in  which  there  was  a 
market  for  jams  you  could  find  a 
majority  of  the  inhabitants  who  knew 
about  this  jam :  still  less  do  I  sup- 
pose that  a  majority  of  the  inhab- 
itants of  the  districts  in  which  this 
jam  was  chiefly  sold,  as  a  whole  knew 
the  jam  intimately,  or  possibly  at 
all;  but  I  think  that  in  the  markets 
I  have  referred  to,  a  substantial  num- 
ber of  persons  who  were  interested 
in  the  question,  and  whom,  from 
their  position,  one  would  expect  to 
have  known  about  the  jam,  did  so 
know  the  plaintiff's  jam;  and  I  cer- 
tainly think  upon  the  evidence  that 
all  who  knew  the  phrase  at  all,  as 
applied  to  jam  before  the  acts  of  the 
defendants  which  are  complained  of, 
identified  the  term  as  meaning  the 
plaintiff's  goods"   (id.  pp.  439-94). 


Miscellaneous  Business  Names. 


169 


where  the  business  is  located  or  where  the  goods  are  sold  of 
such  identity  between  plaintiff  and  the  name  in  question.5 

Texas  courts  have  held  that  the  name  "  Nickle  Store,"  ap- 
plied to  either  nickel  goods  or  goods  sold  for  a  nickel  (5c.)  is 


5  Faultier  v.  Rmhton,  supra.     Fels 
v.     Christopher     Thomas     &     Bros., 
21    R.    P.    C.    85-1903     (Court    of 
App.).      Plaintiffs    were    Americans 
who    made    "  Fels-Naphtha    Soap," 
which  contained  naphtha.     They  in- 
troduced it  into  England  in  1900.    It 
appears    that,    after   this,    customers 
and     dealers     began     to     use     term 
"  Naphtha    Soap "    when    plaintiffs' 
was  the  only  naphtha  soap  on  the 
market.     In  1902  defendant  began  to 
make  "  Naphtha  Soap."    Although  in 
the  two  years  while  plaintiffs'  soap 
was   the  only   naphtha   soap   on   the 
market,  buyers  asking  for  "  Naphtha 
Soap  "  undoubtedly  meant  plaintiffs' 
soap,     there    was,     nevertheless,     no 
evidence  of  any   secondary  meaning 
which  the  word  naphtha  had  acquh'ed 
in  this  two  years  as  applied  to  plain- 
tiffs' soap.    Ripley  v.  Griffiths,  19  R. 
P.  C.  591-1902.    Plaintiff  made  Blue 
in  oval  cakes  which  he  called  "  Oval 
Blue."      The   question   at    issue   was 
whether    or    not    the    words    "  Oval 
Blue "    meant    plaintiff's    blue    and 
nothing  else.     Both  plaintiff  and  de- 
fendant sold  blue  in  oval  form.   Plain- 
tiff began  to  sell  blue  in  ovals  twenty- 
five     years     before     this     suit     was 
brought,  and  for  about  eighteen  years 
no   one   else   sold   oval   blue.     Testi- 
mony showed  that  people  usually  ask 
for  blue  according  to  the  shape,  and 
the  blues  are  called  by  names  denoting 
shape.      Defendant   called   his  goods 
"  Bobby  Blue."    It  was  in  oval  shape. 


Dealers  testified :  "  There  is  only  one 
oval  blue,  that  is  Ripley's."  "  Cus- 
tomers would  ask  for  '  Oval '  to  dis- 
tinguish it  from  '  Rickett's  Square.' 
If  they  asked  for  '  Oval '  I  gave  them 
Ripley's."  "  I  have  never  heard  of 
any  other  oval  blue  than  Ripley's," 
etc.  Referring  to  the  rule  laid  down 
by  Judge  Davey  in  Reddaway  v.  Ben- 
ham,  App.  Cas.  199-1S9G  (see  dis- 
cussion of  this  case,  §  82),  court  de- 
nies injunction  on  ground  that  most 
of  witnesses  either  were  dealers  who 
kept  only  plaintiff's  blue,  or  were 
persons  who  had  never  used  other 
kinds.  In  other  words,  that  identity 
between  name  and  plaintiff's  goods 
was  not  established.  Hansen  v. 
Siegel-Cooper  Co.,  10G  Fed.  691- 
1900  (C.  C.  S.  D.  N.  Y.).  Com- 
plainant made  and  sold  a  preparation 
of  rennet  under  the  name  "  Junket 
Tablets."  The  word  "  Junket  "  is  the 
recognized  English  name  for  a 
species  of  food,  and  complainant's 
tablets  were  used  in  making  it.  It 
was  held  that  "  Junket  Tablets  "  had, 
however,  acquired  a  secondary  mean- 
ing as  applied  to  complainant's 
tablets,  and  defendant,  a  later  manu- 
facturer, was  enjoined  from  using 
the  name  "  Junket  Capsules  "  as  ap- 
plied to  a  preparation  similar  to  com- 
plainant's but  put  up  in  capsules,  al- 
though he  was  allowed  to  indicate 
that  his  preparation  was  used  in 
making  junket. 


170  Unfair  Business  Competition. 

one  in  which,  in  a  given  locality,  an  exclusive  right  may  be 
acquired.6 

The  right  of  the  public  to  the  use  of  this  common,  or  general, 
name  of  an  object  is  not  unlimited.  Through  close  association 
of  the  name  with  an  article  made  by  some  one  person,  it  may 
come  to  mean  to  persons  familiar  with  such  association  only 
the  particular  article  of  the  person  who  has  thus  used  it. 
In  Powell  v.  Birmingham  Vinegar  Brewery  Co.,7  it  is  said 
that  if  a  person  uses  words  which  simply  describe  the  kind 
of  goods  he  makes  or  sells  —  e.  g.,  leather  boots  —  it  would 
be  intolerable  to  confer  upon  him  the  right  to  prevent  other 
persons  from  honestly  using  the  same  words  to  describe  what 
they  make  or  sell.  A  person,  by  using  his  own  name  or  a 
merely  descriptive  word  to  denote  a  particular  article,  cannot 
prevent  other  bona  fide  traders  of  the  same  name  from  using 
it,  nor  can  he  prevent  other  bona  fide  traders  from  making  or 
selling  the  same  sort  of  goods,  or  from  using  the  same  descrip- 
tive word.  Yet,  even  in  such  a  case,  if  the  descriptive  name 
is  proved  to  have  come  to  be,  not  only  the  general  name  of 
the  article,  but  a  name  of  the  goods  of  the  plaintiff,  and  if 
deception  is  also  proved,  a  person  may  be  restrained  from 
using  such  name  or  word  without  taking  such  steps  as  will 
render  mistakes  unlikely  to  occur.8 

§  84.  Secondary  Meaning  of  Semi-Geographic  Names  such 
as     ' '  Empire    State, "    ' '  Hoosier, ' '    Etc. —  Such    names    as 

"Duke    v.    Cleaver,    19    Tex.    Civ.  a  descriptive  one,  but  a  trade  name 

App.    218-1898;    4G     S.    W.     1128.  to  use  which  in  a  given  locality,  an 

Plaintiff,  the  proprietor  of  a  general  exclusive  right  might  be  acquired, 

store,  used  the  words  "  Nickle  Store  "  T  2  Ch.  51-1896. 

as  his  business  sign  and  trade  name,  8  The   following  cases   furnish   fa- 

and  the  store  was  widely  advertised  miliar  examples :    Holloway  v.  Hollo- 

and  generally  known  by  that  name.  way,    13    Beav.   209-1850;    Seixo    v. 

It  was  held  that  the  defendant  was  Provezende,  L.   R.   1   Ch.   192-1865; 

not  entitled  to  use  the  same  sign  and  Wotherspoon  v.  C'urrie,  L.  R.  5  H. 

name    in   connection    with    the   store  L.  Cas.  508-1872,  "  Glenfield  Starch ;" 

opened  by  him  adjoining  plaintiff's.  Seigert  v.  Fincllater,  7  Ch.  Div.  801- 

The  court  considered  that  as  plaintiff  1S7S,    "Angostura   Bitters;"    Tliomp- 

did  not  deal  in  nickel  goods,  and  did  son  v.  Montgomery,  41  Ch.  Div.  35- 

not,  for  the  most  part,  sell  his  wares  1SS9 ;    affirmed    in    App.    Cas.    217- 

for  a  nickel,  the  term  was  not  merely  1891,  "  Stone  Ale." 


Miscellaneous  Business  Names. 


171 


"  Keystone,"  "  Granite  State,"  "  Empire  State,"  "  Hoos- 
ier,"  which  are  nicknames  semi-geographical  in  meaning  may, 
by  usage,  acquire  a  secondary  meaning,  as  connected  with  a 
particular  brand  or  make  of  goods;  and  when  so  used  will 
be  protected  against  use  in  a  similar  sense  by  rivals.  It 
is  not  material  that  the  plaintiff  had  no  special  right  to  use 
the  name  at  the  time  he  adopted  it.9 

A  steamship  agent  may  acquire  a  secondary  meaning  in 
the  name  he  uses  for  a  number  of  lines  represented  by  him 


'Cohen  v.  Nagle,  190  Mass.  4- 
1906;  76  N.  E.  276;  2  L.  R.  A.  961. 
Cohen  made  "  Keystone  Cigars,"  be- 
ginning in  18S5,  thinking  it  a  name 
never  used  before  on  cigars.  He 
built  up  a  large  trade  in  New  Eng- 
land —  $160,000  per  year.  Defend- 
ant, in  1905,  began  to  sell  "  Keystone 
Maid  "  cigars.  Confusion  with  plain- 
tiff's goods  resulted.  Held:  "The 
trade  and  public  in  New  England 
have  come  to  associate  the  word 
'  Keystone  '  with  the  plaintiff's  cigars 
and  to  recognize  it  as  meaning  his  ci- 
gars and  not  those  of  any  other  per- 
son "  (p.  7)  :  and  that,  the  fact  that 
word  "  Keystone  "  has  been  spasmod- 
ically used  on  cigars  did  not  defeat 
plaintiff's  right.  (See  form  of  de- 
cree, pp.  12-13.)  "  The  fact  that  the 
word  "  Keystone  "  was  a  geographical 
name  and  in  common  use  as  a  cigar 
label  since  1870  prevented  his  (plain- 
tiff) adopting  it  as  his  distinctive 
mark  for  cigars  of  his  manufacture. 
It  did  not  prevent  those  words  from 
acquiring  in  time  a  secondary  or  trade 
meaning,  to  wit,  cigars  made  by  the 
plaintiff"  (p.  18).  Julian  v.  Hoosier 
Drill  Co.,  78  Ind.  408-1881.  A 
geographical  nick-name,  such  as 
"  Hoosier,"  may  be  applied  to  a 
specific  article,  such  as  a  grain  drill, 
and   an   exclusive  _  right   may   be   ac- 


quired to  use  it  as  a  trade-mark  or 
trade  name  for  the  article.  "  The 
thing,  and  the  only  thing,  that  is  ma- 
terial in  case  of  a  trade  name  is  this : 
Does  that  name  in  the  trade  mean 
that  goods  to  which  it  is  attached  are 
goods  of  the  plaintiff's  manufacture1? 
If  it  does,  a  case  of  trade  name  is 
made  out,  although  the  plaintiff  had 
no  right  to  adopt  it  as  his  mark  when 
he  did  adopt  it  as  such,  or  having 
been  the  first  to  adopt  it,  and 
without  regard  to  how  many  others 
are  then  using  it."  Buzby  v. 
Davis,  150  Fed.  275-1906  (C.  C.  A. 
8th  Cir.).  Complainant  had  for 
many  years  made  and  sold  at  Phila- 
delphia oils  and  lubricants  under  the 
name  "  Keystone  Lubricating  Com- 
pany." The  symbol  of  the  keystone 
of  an  arch  was  placed  upon  the  pack- 
ages as  a  trade-mark,  and  the  prod- 
ucts were  widely  known  by  the  name 
"  Keystone."  Defendants  began  to 
put  upon  the  market  inferior  oils, 
placing  upon  the  packages  a  similar 
keystone  symbol,  together  with  the 
trade  name  adopted  by  them,  "  Key- 
stone Oil  Company,"  with  the  result 
of  misleading  purchasers.  Held,  on 
demurrer,  that  even  if  "  Keystone " 
were  to  be  taken  as  a  geographical 
term,  unfair  competition  was  shown. 


172 


Unfair  Business  Competition. 


and  this  against  the  owner  of  one  of  the  lines.10  Kekewich, 
J.,  in  Wurm  v.  Webster,11  doubted  if  one  could  acquire  a  sec- 
ondary meaning  in  the  name  "  White  Hungarian  Band,"  be- 
cause the  public  usually  knew  the  band  by  the  name  of  the 
leader  —  or  partially  by  that  name.  See  chapter  on  Geo- 
graphical names. 

§  85.  Geographic  Limits  in  which  Secondary  Meaning  Be- 
comes Known. — A  name  need  not  acquire  this  secondary 
meaning  everywhere,  in  order  to  be  entitled  to  protection  by 
the  court;  but  protection  will  be  given,  if  such  meaning  is 
attributed  to  it  in  the  nearby  region  to  the  place  of  manu- 
facture. Nor  is  it  necessary  that  a  majority  of  the  people  in 
that  locality  must  know  about  the  name  used  in  this  secondary 
way.  This  is  held  by  Faulder  v.  Rushton,  supra.  Nor  will 
the  right  to  an  injunction  be  affected  by  either  the  period  of 
time  the  defendant  has  used  the  offending  name,  or  the  fact 
that  the  plaintiff  has  not  yet  extended  its  business  to  the 
territory  which  the  defendant  occupies.12     See  §  114. 


10  Winsor  v.  Clyde,  9  Phila.  513- 
1872  (Ct,  Com.  PL  Phila.)  Plain- 
tiffs were  agents  at  Philadelphia  for 
several  lines  of  steamers,  but  did  not 
own  the  vessels.  They  had  long  des- 
ignated and  long  advertised  most  of 
these  lines  of  steamers  as  "  Key- 
stone "  lines.  Held,  that  they  had  ac- 
quired a  property  right  in  the  use 
of  the  name,  which  would  be  pro- 
tected by  injunction,  as  against  the 
owners  of  one  of  these  lines,  who, 
after  withdrawing  it  from  the  plain- 
tiffs, advertised  it  as  the  "  Keystone  " 
line.  It  appeared  that  this  particular 
line,  while  managed  by  plaintiffs,  had 
generally  been  known  simply  as  the 
"  Philadelphia  and  Providence  Line  " 
rather  than  by  the  name  "  Keystone." 

"  21  R.  P.  C.  373. 

12  Hygeia  Distilled  Water  Co.  v. 
Consolidated  Ice  Co.,  144  Fed.  139- 
1906  (C.  C.  W.  D.  Pa.)  affirmed,  151 
Fed.  10.    Complainant  and  its  prede- 


cessors had  for  over  twenty  years 
distilled  and  sold  water  of  a  high 
grade,  advertised,  marked,  and  known 
as  "  Hygeia  Water,"  and  had  built 
up  a  large  trade  in  some  states, 
but  had  done  practically  no  busi- 
ness in  Pittsburg  and  vicinity. 
Neither  party  knew  of  the  use  of  the 
name  "  Hygeia "  by  the  other  till 
shortly  before  the  institution  of  the 
suit.  Held,  that  the  word  "  Hygeia  " 
was  not  a  descriptive  word,  but  had 
come  to  denote  the  product  of  the 
complainant;  that  the  defendant's  use 
of  the  word,  though  innocent  at 
first,  was  not  justified  after  the  facts 
as  to  the  prior  use  were  known  to  the 
defendant ;  that  the  right  to  an  in- 
junction was  not  affected  either  by 
the  length  of  time  during  which  de- 
fendant had  used  the  word,  nor  by 
the  fact  that  plaintiff  had  not  yet  ex- 
tended its  business  to  the  locality 
occupied  by  the  defendant. 


Miscellaneous  Business  Names.  173 

Many  names  never  obtain  national  repute;  they  are  known 
only  in  the  vicinity  of  the  place  where  the  goods  to  which  they 
are  attached  are  made,  or  the  persons  who  bear  them  reside. 

The  fact  that  the  plaintiff  has  not  yet  extended  his  trade  to 
the  territory  occupied  by  the  defendant  has  been  held,  in  tech- 
nical trade-mark  cases,  to  be  no  defense  to  an  injunction.13 
But  if  such  extension  of  a  name  or  mark  not  a  technical  mark 
will  cause  confusion  in  some  locality  with  a  mark  well  known 
there,  there  is  reason  to  believe  the  use  of  the  foreign  name 
should  be  enjoined  in  that  section. 

Such  a  secondary  meaning  may  be  acquired  by  words  in 
general  use,  when  a  phrase  made  up  of  them  has  come  to  have 
a  particular  meaning  in  the  minds  of  the  public.  This  has 
been  held  true  where  the  phrase  "  incorporated  accountant  " 
had  come  to  mean  in  England  that  the  person  to  whom  it  was 
applied  was  a  member  of  a  certain  corporation  called  ' '  Society 
of  Accountants  and  Auditors."14 

A  name  often  becomes  associated  with  a  particular  place  be- 
cause of  the  existence  there  of  a  business  plant;  again,  the 
name  may  be  associated  with  the  place  before  the  business  is 
started  there,  and  the  business  be  named  from  the  place.  In 
either  event  the  business  may  move  and  seek  to  take  with  it 
the  name  and  to  prevent  others  who  may  buy  the  plant  or  lo- 
cality it  abandons  from  using  the  name.     In  Nicholson  v. 

13  Hygeia  Distilled  Water  Co.  v.  term  was  generally  understood  to  im- 
Consoli dated  Ice  Co.,  144  Fed.  139-  ply  membership  in  this  society.  In 
1906  (C.  C.  Pa.) ;  affirmed,  151  Fed.  1905,  a  new  company  was  formed  for 
10-1907  (C.  C.  A.  3d  Cir.)  ;  citing  similar  purposes.  Held,  that  the 
Derringer  v.  Plate,  29  Cal.  296-1865 ;  phrase  "  incorporated  accountant  " 
87  Am.  Dec.  170 ;  Hopkins  on  Trade-  had  acquired  a  secondary  meaning, 
Marks,  §  13.  and  that  members  of  the  new  com- 

14  Society  of  Accountants  and  Au-  pany  should  not  be  allowed  to  use 
ditors  v.  Goodway  (1907,  Ch.  Div.),  this  designation,  nor  the  company  to 
76  L.  J.  Ch.  384.  hold  out  its  members  as  entitled  to 

Plaintiff  society  was   incorporated  use  it  in  such  a  way  as  to  lead  to  the 

in    1885,   and    admitted    as   members  belief  that  they  were  members  of  the 

only    well-qualified     accountants;     it  plaintiff  society.     See  similar  Scotch 

gained    a    high    reputation    and    its  case.      Soc.    of  Accts.   in   Edinb.    v. 

members   were   usually    described    as  Corp.   of  Accts.,   20    Ct.    Sess.    Cas. 

"  incorporated    accountants,"     which  750,  4  Ser. 


174  Unfair  Business  Competition. 

Buchman,15  plaintiff  set  up  a  distillery  in  1847,  which  he  called 
the  "  Black  Swan  Distillery,"  and  in  1897  sold  it  and  the  plant 
was  moved  away.  The  defendant,  a  spirit  merchant,  pur- 
chased the  place  where  the  distillery  stood  and  advertised  that 
the  Black  Swan  had  been  rebuilt,  and  contended  he  had  a  right 
to  the  name  as  it  came  from  the  fact  that  a  public  house  of  that 
name  once  stood  on  the  spot.  Held,  defendant's  reputation 
was  as  a  dealer  in  Scotch  whiskey.  Name  Black  Swan  was 
associated  with  distilling  gin,  or  whiskey,  and  defendant  did 
not  deal  in  gin.  No  evidence  shown  of  anyone  being  misled. 
Action  dismissed.  The  value  of  many  names  is  based  on 
usage  in  certain  particular  localities,  in  which  the  party  using 
the  name  or  mark  has  established  his  business.  Sartor  v. 
Schaden  holds16  that  "When  the  question  of  unfair  trade 
is  involved,  one  person  may  have  a  property  right  in  the 
secondary  use  of  a  word  in  one  locality  and  another  in  the 
same  word  or  device  in  another.  This  is  one  of  the  dis- 
tinguishing features  between  a  trade-mark,  strictly  speaking, 
and  a  trade  name.  One  is  of  necessity  geographical,  and 
covers  the  entire  limits  of  the  jurisdiction  of  the  sovereignty 
granting  the  right;  and  the  other  is  of  necessity  local,  not 
founded  upon  any  authority  or  right  from  the  state,  but  based 
upon  usage  in  the  particular  locality,  or  localities,  in  which 
the  party  is  doing  or  seeks  to  do  business."  "  See  -§§  89  and 
112  et  seq. 

§  86.  Existence  of  Secondary  Meaning  a  Question  of  Fact.— 
What  facts  will  warrant  a  decision  that  such  a  secondary 
meaning  has  been  acquired,  is  a  question  of  fact  and  a  different 
question  in  each  case.  Evident  deception  for  a  year  may  not 
warrant  such  a  finding  in  absence  of  intent  to  defraud.18 

15 19  R.  P.  C.  321-1900.  tiffs  formed  partnership   at  Crooks- 

16 125  Iowa  696-704-1904;  101  N.  ton,     Minnesota,     under     the     name 

•VV.  511.  "  Crookston       Marble       &       Granite 

17  Draper  v.  Skerett,  116  Fed.  206 ;  Works."       Two     weeks     later     they 

Hainque  v.  Cyclops  Iron  Works,  136  changed   their   name   to   "  Crookston 

Cal.  351;  68  Pac.  1014;  Clark  Thread  Marble  Works."     Nine  years  before 

Co.  v.  Armitage,  67  Fed.  896 ;  74  Fed.  defendants    began    business    at    the 

936.  same  place  as  "  Northwestern  Marble 

lsNesne  v.  Sundct,  101  N.  W.  490-  Works  "  and  used  the  name  "  Marble 

1904;  93  Minn.  299.    In  1901  plain-  Works"  as  a  sign.    Ten  per  cent,  of 


Miscellaneous  Business  Names. 


17o 


§  87.  Names  of  Goods  Intended  for  Export. —  The  fact 
that  goods  are  exported  to  countries  where  other  languages 
are  sj^oken  may  inject  into  the  question  of  the  use  of  a 
name  the  interpretation  which  may  be  placed  upon  the 
name  by  the  foreign  consumers.  These  arise  over  colors  of 
trade-marks,  over  names  of  the  goods,  and  over  names  of  the 
houses  which  do  the  exporting;  and  it  has  been  held  repeatedly 
that  it  is  unfair  competition  for  a  house  to  export  goods  under 
any  label  or  name  which  may  tend  to  pass  off  its  goods  in  the 
foreign  market  as  those  of  some  other  person.19 


their  letters  were  addressed  "  Crook- 
ston  Marble  Works."  In  June,  1902, 
they  formed  a  corporation  under 
name  "  Crookston  Marble  Works." 
Court  found  that  there  was  no  intent 
to  defraud  on  part  of  either  plaintiff 
or  defendant.  Held,  that  plaintiff 
first  adopted  the  name  and  that  the 
defendants  acquired  no  right  in  the 
name  because  mail  intended  for 
"  Northwestern  Marble  Works  "  was 
addressed  to  "  Crookston  Marble 
Works."  No  vested  right  in  that 
name  accrued  to  the  defendants. 

10  Gout  v.  Aleploglu,  6  Beav.  69- 
1S33.  Gout  made  watches  for  Turk- 
ish market  where  they  acquired  great 
repute  by  the  marks  on  them  which 
consisted  of  Gout's  name  in  Turkish 
and  "  Pessendede  "  (warranted)  — 
and  other  minor  marks.  Defendant 
had  watches  made  with  the  words 
"  Ralph  Gout  "  and  "  Pessendede  "  in 
Turkish  engraved  on  same  part  of 
watch  that  plaintiff  put  these  mai'ks. 
Injunction  granted.  Collins  Company 
v.  Oliver  Ames  &  Sons  Corporation, 
18  Fed.  561-1SS2  (C.  C.  S.  D.  N. 
Y.).  Plaintiff  was  a  corporation  or- 
ganized in  1843  to  carry  on  an  al- 
ready established  business  in  Con- 
necticut of  making  edge  tools;  its 
corporate  powers,  however,  extend- 
ing to  the  making  -of  all  articles  of 


metal.  The  trade  name  stamped  on 
the  goods,  both  before  and  afterward, 
was  "  Collins  &  Co.,"  by  which  name 
its  goods  were  known  over  the  world. 
Defendant  was  the  successor  of 
Oliver  Ames  &  Sons,  well-known 
makers  of  shovels  and  other  tools.  In 
1856,  this  firm  began  to  send  shovels 
to  Australia  stamped  "  Collins  & 
Co.,"  this  name  being  adopted  to  take 
advantage  of  the  plaintiff's  reputa- 
tion for  the  quality  of  its  tools,  which 
were  then  sold  in  Australia,  though 
plaintiff  manufactured  no  shovels  at 
all  until  long  after  1856.  Oliver 
Ames  &  Sons,  and  defendants,  their 
successors,  also  used  on  their  goods 
labels,  indicating  that  they  were 
manufactured  "  by  Collins  &  Co., 
North  Easton,  Mass.,  U.  S.  A."  They 
used  the  name  "  Collins  &  Co."  only 
in  the  export  trade.  Held,  that 
the  defendant  had  no  right  to  the  use 
of  the  name  "  Collins  &  Co."  against 
plaintiff,  although  defendant  had  long 
exported  shovels  under  that  name 
while  plaintiff  had  no  trade  in  shovels 
—  in  view  of  the  fact  that  since  1S13 
plaintiff  had  the  right  to  make 
shovels  and  of  the  circumstances  un- 
der which  the  use  of  the  name  by  the 
defendant  originated.  See  also  chap- 
ters on  Names  of  Goods  and  Geo- 
graphical Names. 


176  Unfair  Business  Competition. 

§  88.  Lord  Kay's  Summary  of  the  Law  of  Names. —  Lord 
Kay,  in  Powell  v.  Birmingham  Vinegar  Brewery  Co.,20  has 
summarized  the  rules  relating  to  the  law  of  trade  names  as 
follows:  "  The  law  relating  to  this  subject  may  be  stated  in  a 
few  propositions : 

"  (1)  It  is  unlawful  for  a  trader  to  pass  off  his  goods  as  the 
goods  of  another." 

"  (2)  Even  if  this  is  done  innocently  it  will  be  restrained. 
(Millington  v.  Fox,  3  Myl.  &  Cr.  338-1838)." 

"  (3)  A  fortiori  if  done  designedly,  for  that  is  a  fraud." 

"  (4)  Although  the  first  purchaser  is  not  deceived,  never- 
theless if  the  article  is  so  delivered  to  him  as  to  be  calculated  to 
deceive  a  purchaser  from  him,  that  is  illegal.  {Sykes  v.  Sykes, 
3B.&C.  541-1824)." 

"  (5)  One  apparent  exception  is  that,  where  a  man  has  been 
describing  his  goods  by  his  own  name,  another  man  having  the 
same  name  cannot  be  prevented  from  using  it,  though  this  may 
have  the  effect  of  deceiving  purchasers.  (Burgess  v.  Burgess, 
3DeG.  M.  &G.  896-1853)." 

"  (6)  But  this  exception  does  not  go  far.  A  man  may  so 
use  his  own  name  as  to  infringe  the  rule  of  law:  l  It  is  a 
question  of  evidence  in  each  case  whether  there  is  false  repre- 
sentation or  not,'  per  Turner,  L.  J.,  in  Burgess  v.  Burgess 
(3  De  G.  M.  &  G.  896-1853,  at  p.  905).  So  he  may  be  restrained 
if  he  associates  another  man  with  him  so  that  under  their  joint 
names  he  may  pass  off  goods  as  the  goods  of  another  person. 
(Croft  v.  Day,  7  Beav.  84-1843;  Clayton  v.  Day,  26  Sol.  Jour. 
43-1881;  M.  Melachrino  &  Co.  v.  Melachrino  Egyptian  Cigar- 
ette Co.,  4  R.  P.  C.  215-1887)." 

"  (7)  Another  apparent  exception  is,  where  a  man  has 
under  a  patent  had  a  monopoly  for  fourteen  years,  and  has 
given  the  article  a  descriptive  name,  he  cannot,  when  the  patent 
has  expired,  prevent  another  from  selling  it  under  that  name. 
(Young  v.  Macrae,  9  Jur.  N.  S.  322-1862;  Linoleum  Manufac- 
turing Co.  v.  Narin,  7  Ch.  Div.  834-1878)." 

"  (8)  I  am  not  sure  this  would  be  so  if  the  name  so  used 
were  the  name  of  the  patentee,  or  even  a  purely  fanciful  name 
not  descriptive." 

10  2  Ch.  54-79-1896. 


Miscellaneous  Business  Names.  177 

"  (9)  Certainly,  where  there  has  not  been  a  patent,  and  an 
article  has  been  made  and  sold  under  a  fanciful  name  not  de- 
scriptive, so  that  the  article  as  made  by  one  person  has  acquired 
reputation  under  that  name,  another  trader  will  not  be  per- 
mitted to  use  that  name,  for  a  similar  article  made  by  him. 
(Braham  v.  Bustard,  1  Hem.  &  M.  447-1863;  Cochrane  v.  Mac- 
nish  &  Son,  App.  Cas.  225-1896)." 

"  (10)  To  this  last  proposition  there  is  again  a  limitation. 
If  the  first  maker  has  slept  upon  his  rights,  and  allowed  the 
name  to  be  used  by  others  until  it  has  become  publici  juris, 
the  court  will  not  interfere." 

§  89.  Names  Considered  as  Transitory  or  Personal  and  as 
Local  or  Fixed. —  Business  or  trade  names  are  either  local 
or  geographical,  or  transitory  or  personal  in  character, —  the 
one  attaching  to  a  place  regardless  of  the  ownership  of  the 
name  at  any  one  time,  the  other  attaching  to  the  person  regard- 
less of  where  the  person  locates  himself.  This  distinction  is 
important  in  cases  involving  names  of  hotels  and  buildings. 

It  is  not  necessarily  the  exact  name  which  one  applies  to  a 
hotel  that  the  law  will  rjrotect.  Any  name  by  which  the 
hotel  has  become  known  is  entitled  to  such  protection;  for  the 
use  of  either  one  by  a  rival  may  work  injury  to  the  complain- 
ant's house  and  business.  Some  hotel  names  are  personal 
names,  others  impersonal,  certain  of  these  names  attach  to  a 
place,  to  a  particular  hotel  regardless  of  its  ownership;  while 
others  have  been  held  to  be  the  property  of  a  person  and  to 
attach  to  him  rather  than  to  the  place.  Such  a  personal  hotel 
name  was  involved  in  a  California  case  in  which  the  plaintiff 
leased  land  where  he  erected  and  conducted  a  hotel  to  which  he 
gave  a  name.  Later  he  moved  and  used  the  same  name  on  a 
new  hotel ;  it  was  held  that  the  name  was  his  property  and  did 
not  pass  to  the  owner  of  the  first  named  premises.21 

21  Woodward  v.  Lazar,  21  Cal.  449-  it  that  name.  During  his  occupancy 
1863.  Defendants  were  restrained  as  tenant,  he  purchased  and  built  on 
from  using'  the  name  "  What  Cheer  the  adjoining  lot,  another  hotel  edi- 
House,"  as  the  name  of  a  hotel  in  fiee,  and  occupied  it  also.  Afterward 
the  city  of  San  Francisco.  Wood-  he  surrendered  the  leased  premises, 
ward,  plaintiff,  first  erected  a  hotel  and  occupied  the  second,  and  con- 
building  on  leased  premises  and  gave  tinued  to  conduct  a  hotel  business  on 

19, 


178 


Unfair  Business  Competition. 


Tims,  a  clear  distinction  "was  taken  by  the  California  court, 
between  the  reputation  a  name  or  appellation  gives  to  a  certain 
business  locality,  and  which  adheres  to  that,  without  any  refer- 
ence to  the  proprietor  of  the  establishment  personally,  and  the 
designation  or  name  for  a  locality,  at  which  a  certain  busi- 
ness is  carried  on,  and  which  is  not  impersonal  and  does  not 
attach  to  the  property,  but  remains  subject  to  the  control  of  the 
proprietor.  In  treating  of  this  distinction  the  court  here 
said:  "  Plaintiff's  claim  for  protection,  so  far  as  his  right 
results  from  the  good-will  acquired  for  the  name  while  it  was 
applied  exclusively  to  the  leased  premises,  may  not  be  sustain- 
able, yet  he  is  entitled  to  vjrotection  in  the  exclusive  use  of  the 
name  as  proprietor  of  the  new  house  "     (id.  p.  453'). 

Had  the  name  of  the  establishment  formed  an  element  of  the 
good-will  of  any  hotel  business  conducted  on  these  particular 
premises,  it  might  have  been  lost  by  the  conveyance  to  the 
defendant;  but  as  it  was  rather  a  personal  possession  of  the 
proprietor,  while  lessee,  and  not  an  impersonal  feature  of 
this  business,  it  did  not  pass  to  the  landlord,  but  remained 
subject  to  the  control  of  the  lessee  at  the  termination  of  the 
lease. 


his  own  premises  under  the  name  of 
"  What  Cheer  House."  The  defend- 
ants later  purchased  the  premises  first 
described,  and  conducted  thereon  a 
hotel  under  the  name  "  Original  What 
Cheer  House."  The  contention  of  the 
plaintiff,  on  injunction,  was  that  the 
name  belonged  to  him,  as  the  pro- 
prietor of  the  hotel  last  established 
which  he  had  owned  and  occupied, 
which  name  he  had  theretofore 
used  continuously  while  proprietor  of 
the  hotel  last  leased,  and  up  to  the 
date  of  its  surrender,  it  being  a  trade 
name.  The  contention  of  the  defend- 
ant was,  that  the  name  was  a  mere 
designation  of  the  building  in  which 
the  business,  at  first  established,  was 
conducted,  and  that  it  attached  to 
the  building  at  the  termination  of  the 


plaintiff's  lease,  and  passed  to  him 
by  his  purchase  thereof  from  the 
plaintiff's  lessor.  Denying  the  latter 
]iroposition,  the  court  said :  "A  per- 
son may  have  a  right,  interest,  or 
property  in  a  particular  name,  which 
he  has  given  to  a  particular  house, 
and  for  which  house,  under  the  name 
given  to  it,  a  reputation  and  good- 
will may  have  been  acquired;  but  a 
tenant,  by  giving  a  particular  name 
to  a  building,  which  he  applies  to 
some  particular  use,  as  a  sign  of  the 
business  done  at  that  place,  does  not 
thereby  make  the  name  a  fixture  to 
the  building,  and  transfer  it  irrevo- 
cably to  the  landlord"  (id.  p.  452). 
See  also  Nicholson  v.  Buchman,  19 
R.  P.  C.  321-1900;  supra,  §  S3. 


Miscellaneous  Business  Names. 


179 


It  would  seem  that  if  a  person,  while  lessee  of  a  hotel  prop- 
erty, by  his  energy  and  industry,  builds  up  a  reputation  for 
the  hotel  that  brings  to  it  a  large  increase  of  business  and  adds 
value  to  the  property,  on  surrendering  it  to  the  landlord,  he 
should  be  entitled  to  some  return  for  the  increase  in  its  value, 
if  such  increase  was  solely  due  to  his  efforts. 

In  Howard  v.  Henriques22  it  appears  that  the  plaintiff's 
hotel  was  called  the  "  Irving  House  "  but  it  soon  became  gen- 
erally known  as  the  "  Irving  House  "  and  "  Irving  Hotel," 
indiscriminately.  The  defendants  named  their  house  the 
"  Irving  Hotel."  There  was  no  question  of  resemblance 
between  the  two  hotels,  or  the  two  signs.  It  was  the  name  that 
was  protected,  not  the  name  which  plaintiff  took,  but  one  of  the 
names  by  which  this  hotel  was  known. 

The  right  to  use  a  hotel  name  is  entirely  in  the  control  of  the 
owner  of  the  name.  If  he  contracts  with  a  person  allowing  the 
use  of  it  for  a  certain  period,  at  the  end  of  that  time  he  may 
assume  entire  control  of  it  again,  and  for  the  person  who  has 
been  using  it  under  the  contract  to  continue  to  do  so  will  sub- 
ject him  to  injunction.23 


22  3  Sandf.  (N.  Y.)  725-1851.  Plain- 
tiff owned  and  ran  "  Irving  House  " 
opened  1848.  In  1851,  defendant 
opened  in  same  city  "  Irving  Hotel." 
The  court  said :  "  We  think  that  the 
principle  of  the  rule  is  the  same, 
to  whatever  subject  it  may  be 
applied,  and  that  a  party  will 
be  protected  in  the  use  of  a 
name  which  he  has  appropriated 
and  by  his  skill  rendered  valuable, 
whether  the  same  is  upon  articles  of 
personal  propei'ty  which  he  may 
manufacture,  or  applied  to  a  hotel 
where  he  has  built  up  a  prosperous 
business.  *  *  *  "  "If  one  man 
has,  by  close  attention  to  the  comfort 
of  his  guests,  and  by  superior  energy, 
made  his  hotel  desirable  for  the 
traveler,  and  caused  its  name  to  be- 
come popular  throughout  the  land, 
another  man   oughf  not   to   be   per- 


mitted to  assume  the  same  name  in 
the  same  town,  and  thus  deprive  him, 
who  first  appropriated  the  name,  of 
some  portion  of  the  fruits  of  that 
good-will  which  honestly  belongs  to 
him  alone." 

'"Marsh  v.  Billings,  61  Mass.  322- 
1851.  The  proprietor  of  the  Revere 
House  arranged  with  defendants  to 
have  carriages  at  the  station  to  carry 
passengers  to  the  Revere  House,  au- 
thorized him  to  use  the  badge  "  Re- 
vere House  "  and  the  carriages  and 
the  drivers'  caps,  and  gave  him  the 
privilege  of  carrying  all  passengers 
from  the  hotel  to  the  station.  After  a 
time  the  agreement  with  the  defend- 
ants was  terminated,  and  a  similar 
exclusive  arrangement  was  made  with 
the  plaintiffs.  Defendants,  however, 
still  continued  to  use  the  "  Revere 
House  "  badge,  and  sought  to  divert 


ISO 


Unfair  Business  Competition. 


Where  the  name  of  a  hotel  was  attached  to  it  before  a  lessee 
of  it  took  possession,  the  fact  that  the  lessee  increases  by  his 
energy  and  skill  the  value  of  the  name  is  not  a  reason  why  he 
may  use  the  name  in  another  place  in  competition  with  the 
owner,  because  to  do  so  would  mislead  the  public.24 

A  person  who  sublets  a  boarding-house  —  which  the  original 
lessee  has  named  "  Norwood  "  (the  place  being  unnamed  be- 
fore)—  may  not  restrain  the  lessee  from  using  name  "  Nor- 
wood Hall  "  —  on  adjoining  premises.25 

Where  a  lessee  ran  an  inn  for  three  years  under  name 
"  Metucken  Inn  "  and  tken  moved  to  anotker  part  of  tke  town, 
a  person  buying  tke  building  formerly  used  by  kim  will  not  be 
allowed  to  use  tke  name  "  Metucken  Inn."  To  do  tins  is  un- 
fair competition  —  wken  tke  name  was  first  used  by  tke  lessee 
in  question.26 


passengers  from  plaintiffs'  carnages, 
and  there  was  some  evidence  of  actual 
misrepresentation  on  the  part  of  de- 
fendants' employees.  Held,  that  the 
defendants  had  no  right  to  use  the 
"  Revere  House  "  badge  in  such  man- 
ner as  to  hold  themselves  out  as  hav- 
ing the  patronage  and  confidence  of 
that  house,  and  that  plaintiffs  were 
entitled  to  such  damages  as  the  jury 
from  all  the  evidence  might  judge 
reasonable,  and  not  only  for  the  loss 
of  such  passengers  as  plain  tiffs  could 
prove  had  actually  been   diverted. 

24  0' Grady  v.  McDonald,  —  N.  J. 
Eq.  ;  66  Atl.  175-1907.  Com- 
plainant owned  a  hotel  in  Atlantic 
City,  known  for  twelve  years  as  "  The 
Hotel  Dominion."  Defendant,  after 
conducting  this  hotel  as  lessee  for  one 
year,  and  (as  she  claimed)  greatly  in- 
creasing its  reputation,  erected  and 
opened,  a  few  hundred  feet  away  on 
the  same  avenue,  a  new  hotel  under 
the  name  "  The  New  Dominion." 
Held,  that  the  use  of  this  name  should 
be  enjoined,  as  tending  to  mislead  the 


public.  Wilcoxen  v.  McCray,  38  N. 
J.  Eq.  466-1884,  infra,  distinguished. 

25  Wilcoxen  v.  McCray,  38  N.  J.  Eq. 
466-1884.  Defendant  in  1881  rented 
a  house  at  Asbury  Park  for  three 
years,  and  occupied  it  as  a  boarding- 
house  for  the  season  of  1881,  placing 
a  sign  marked  "  Norwood "  on  the 
front  of  the  house,  which  was  known 
as  the  Norwood  Cottage.  Early  in 
1SS2  defendant  sublet  the  house  to 
complainant  from  May  1st  to  Octo- 
ber 15th,  1882,  no  reference  being 
made  to  the  name  of  the  house.  De- 
fendant was  at  the  same  time  erecting 
on  adjoining  land  a  boarding-house 
which  she  occupied  for  the  season  of 
18S2,  and,  on  the  front  porch  of 
which,  about  June  20th,  she  placed 
the  sign  "  Norwood  Hall."  Held,  that 
she  should  not  be  restrained  from 
doing  so,  for,  if  the  name  was  the 
badge  of  anyone's  business  or  busi- 
ness reputation,  it  was  that  of  de- 
fendant, and  not  complainant. 

20  Busch  v.  Gross,  71  N.  J.  Eq.  508; 
64  Atl.  754-1906.   Complainant  from 


Miscellaneous  Business  Names.  181 

In  Chadr on  Opera  House  Co.  v.  Loonier  *  the  court  declined 
to  protect  the  plaintiff  in  the  exclusive  use  of  the  name  "  Chad- 
ron  Opera  House  "  for  a  building  used  in  part  as  a  theatre, 
where  the  name  had  been  used  by  plaintiff  and  defendants 
contemporaneously,  until  about  the  time  the  suit  was  brought, 
and  without  an  apparent  intention  on  the  part  of  either, 
to  appropriate  the  name  to  his  exclusive  use  as  the  distinctive 
designation  of  his  building. 

The  court  says  that,  to  entitle  a  party  to  enjoin  the  use  of 
such  a  name  by  another,  "  he  must  make  it  appear,  with  at 
least  reasonable  certainty,  that  his  adoption  of  the  name 
was  prior  in  time  to  that  of  his  adversary;  that  he  adopted 
and  made  use  of  it  in  such  manner  as  would  reasonably  apprise 
the  public  that  he  intended  it  as  a  distinctive  appellation  for 
his  trade,  commodity  or  place  of  business,  and  that  it  was  not, 
at  the  time  of  his  attempted  appropriation  of  it,  in  common 
or  general  use  in  connection  with  like  businesses,  commodities, 
buildings  or  localities." 

§  90.  Phrases  such,  as  ' '  Formerly  with  ' '  and  ' '  Successor 
to,"  Etc. —  We  now  come  to  the  cases  which  deal  with  the 
rights  of  an  employee,  who  has  left  his  employment,  to  use 
the  name  of  the  person  in  whose  employment  he  has  been  and 
those  of  a  purchaser  of  the  business  of  another,  to  use  the 
name  of  his  predecessor.  It  seems  that  one  has  a  right  in  law 
to  state  to  the  public  in  any  proper  way,  the  fact  that  he  has 
been  "  formerly  with  "  the  house  whose  employ  he  has  left. 
This  may  take  the  form  of  any  one  of  several  phrases  as 
"  Late  with,"  "  From,"  "  Formerly  with,"  "  Late  of  the 
firm  of."  But  if  any  one  of  these  phrases  are  used,  the  law 
will  insist  that  it  be  the  name  of  the  person  using  the  phrases, 

1903     to     1906    maintained     in     the  the  sign  "  Metuehen  Inn."     Defend- 

borough  of  Metuehen  an  inn,  which  ant  purchased  the  house  first  occupied 

was  well  known  and  appears  to  have  by  the  complainant,  and  two  months 

been    designated    as    the   "  Metuehen  after  plaintiff  had  put  up  his  sign 

Inn,"  although  no  such  sign  was  dis-  on  the  new  place,  defendant  placed 

played.     His   lease   expiring,   he  re--  in  front  of  his  house  a  sign  "  Metu- 

moved  to  another  house  in  the  same  \chen  Inn."    Held  unfair  competition, 

borough,    and    there    continued    his  27  71   Nebr.   785;    99   N.    W.   G49- 

business  as  an  innkeeper,  putting  up  1904. 


182 


Unfair  Business  Competition. 


and  not  the  name  of  his  former  employer,  that  is  prominently 
displayed.28 

A  partner  who  entered  a  partnership  with  one  who  owns 
a  trade-mark  will,  on  retiring  from  it,  have  no  interest  in  or 
right  to  use  the  mark  except  by  special  arrangement.  Where 
L.  had  long  sold  li  Old  Velvet  "  whiskey  and  then  entered  a 
partnership  with  K.  under  the  name  of  L.  &  K.,  and  K.  after- 
ward retired,  he  was  held  to  have  no  right  in  the  name  "  Old 
Velvet.  "2Sa 

"A  person  who  has  been  a  manager  of  another's  business, 
has  a  right,  on  settling  up  an  independent  business,  to  make 
known  to  the  public  that  he  has  been  with  the  firm,  but  he 
must  take  care  not  to  do  so  in  a  way  calculated  to  lead  the 
public  to  believe  that  he  is  carrying  on  the  business  of  his 
former  employer,  or  is  in  any  way  connected  with  it."  (Head- 
note.)281' 

The  use  of  any  device  which  will  cause  a  false  impression  to 
be  given  by  the  use  of  any  of  these  phrases  will  be  enjoined, 
such  as  erecting  and  using  an  awning  which  when  let  .down 


^  Colton  v.  Thomas,  2  Brewst. 
(Pa.)  308-1869;  7  Phila.  257  (Com. 
Pleas,  Phila.).  Plaintiff  had  pur- 
chased the  right  to  use  for  his  busi- 
ness the  name  "  Colton  Dental  As- 
sociation," and  for  some  years  con- 
ducted a  dental  business  under  that 
name.  Defendant  was  a  former  em- 
ployee of  plaintiff  who  had  opened  a 
dental  office  of  his  own  some  distance 
away  on  the  same  street,  using  on 
his  sign  and  cards  his  own  name 
with  the  addition,  "  Formerly  Oper- 
ator at  the  Colton  Dental  Rooms." 
The  words,  "  Formerly  Operator  at " 
were  in  much  smaller  letters  than 
"  Colton  Dental  Rooms."  Held,  that 
the  sign  was  calculated  to  mislead  the 
public,  and  injunction  granted. 
Holbrook  v.  Nesbitt,  163  Mass.  120- 
1S95;  39  N.  E.  794  (from  head- 
note)  :  "A  person  who  was  formerly 
in   the   employ   of   a   firm   and   who 


engages  in  a  similar  business,  dis- 
playing upon  his  office  a  sign  con- 
taining underneath  his  name  the 
words  '  Late  of  the  Firm,'  will  not 
be  enjoined,  if  the  sign  is  not  painted 
in  such  a  manner  as  to  be  likely  to 
mislead  the  public."  Lee  v.  Haley, 
L.  R.  5  Ch.  App.  155-1869.  Plain- 
tiffs had  been  doing  business  at  22 
Pall  Mall,  under  the  artificial  name 
of  "Guinea  Coal  Co."  Defendant, 
who  had  been  their  manager,  set  up 
a  rival  business  under  the  name  of 
'•Pall  Mall  Guinea  Coal  Co."  at  46 
Pall  Mall.  His  envelopes  and  busi- 
ness cards  were  printed  in  such  a 
way  as  to  resemble  the  plaintiffs'. 
Injunction  was  granted. 

2Sa  Blumenthal  v.  Bigbie,  30  App. 
Cas.  (D.  C.)  118-1908. 

28b  Glenny  v.  Smith,  2  Drew.  & 
Sm.  476-1865;  Hookham  v.  Pottage, 
L.  R.  8  Ch.  App.  91-1872. 


Miscellaneous  Business  Names. 


183 


covered  all  of  a  sign  except  the  name  of  the  house  which  the 
defendant  had  left.29 

§  91.  Signs. —  Business  signs  are  not  restricted  to  those 
bearing  the  name  of  the  owner  of  the  business  or  that  of  the 
store  or  business  itself.  A  globe,  a  device  or  figure  of  any  sort 
with  which  the  public  comes  to  associate  the  business  which  it 
advertises,  is  a  sign ;  and  a  sign  may  be  made  use  of  by  a  trader 
who  competes  unfairly  to  defraud  a  rival  of  business  right- 
fully belonging  to  him.  Sometimes  these  signs  are  descriptive 
of  a  particular  place  and  cannot  be  used  apart  from  that  place ; 
but  usually  the  sign  goes  with  the  business  when  it  moves  and 
the  owner  can  restrain  one  moving  into  the  place  which  he  has 
vacated  from  using  the  sign  he  has  been  using. 

If  a  name  or  sign  device  becomes  associated  in  the  public 
mind  with  a  particular  locality  to  the  extent  that  the  name  or 
sign  is  a  sort  of  finger-post  directing  them  to  this  one  locality, 


29  Glenny  v.  Smith,  2  Drew.  &  Sm. 
476-1865.  Defendant  had  been  in 
plaintiffs'  employ  and  started  in  busi- 
ness on  his  own  account.  Over  his 
shop  he  had  his  own  name,  Frank  D. 
Smith,  printed  in  large  black  letters 
on  a  white  ground;  but  on  the  brass 
plates  under  the  windows  of  his  shop 
he  had  engraved  the  word  "  from  " 
in  small  letters,  and  the  words 
"  Thresher  and  Glenny "  (the  name 
of  plaintiffs'  firm)  in  large  letters. 
He  had  an  awning  in  front  of  his 
shop,  which,  when  let  down,  would 
cover  his  own  name  and  expose  only 
the  name  of  plaintiffs'  finn.  The 
court  held  that  defendant  was  deceiv- 
ing the  public,  and  an  injunction  was 
issued.  Croft  v.  Day,  7  Beav.  84- 
1843;  Levy  v.  Walker,  10  Ch.  Div. 
436-1879;  Turton  v.  Turton,  42  Ch. 
Div.  128-1889;  Hookman  v.  Pottage, 
L.  R.  8  Ch.  App.  91-1872;  Meneely 
v.  Meneely,  62  N.  Y.  427-1S75 ;  Full- 
wood  v.  Full  wood,  9  Ch.  Div.  176- 
1878.     Newark  Ceal  Co.  v.  Spangler, 


54  N.  J.  Eq.  354-1896;  34  Atl.  932. 
Defendant  having  for  some  years 
been  engaged  in  the  coal  business  un- 
der the  name  of  the  Newark  Coal 
Company  (Incorporated),  formed, 
with  others,  in  1892,  a  corporation 
under  the  same  name  and  transferred 
to  it  his  business  and  good-will.  He 
was  for  four  years  president  and  di- 
rector of  the  company.  He  then 
ceased  to  be  a  director  or  officer, 
though  retaining  stock,  and  went  into 
the  coal  business  on  his  own  account, 
advertising  himself  as  "  Formerly  of 
tbe  Newark  Coal  Company  "  and  ap- 
pealing for  orders  to  the  customers 
"  who  have  patronized  him  and  his 
company  for  the  past  eleven  years." 
Held  (on  application  for  preliminary 
injunction),  that  he  should  not  be 
enjoined  from  representing  himself 
as  formerly  connected  with  the  com- 
pany. Court  disapproves  here  of 
Partridge  v.  Menck,  2  Sandf.  Ch. 
(N.  Y.)  622-1845. 


184 


Unfair  Business  Competition. 


no  concern  leaving  that  locality  to  settle  in  another  may  set  np 
the  same  sign  or  use  such  a  name  at  the  new  stand. 

One  will  not  be  allowed  to  adopt  for  a  sign,  a  device  already 
in  use  if  likely  to  lead  to  confusion.  On  moving  into  the  neigh- 
borhood of  a  rival  using  a  particular  sign,  one  may  not  adopt 
the  same  sign  if  this  would  cause  the  public  to  confuse  the  two 
places  of  business.  So  it  has  been  held  of  a  globe  used  by 
one  who  moved  into  a  store  next  door  to  one  already  using 
a  globe  as  a  sign.30  It  is  the  custom  in  certain  lines  of  trade, 
for  concerns  owning  many  stores  to  paint  the  store  fronts  a 
peculiar  color,  and  use  a  sign  of  an  individual  type  for  the 
purpose  of  enabling  customers  to  identify  all  the  various 
stores  as  belonging  to  one  concern.  Of  course,  there  can  be  no 
exclusive  right  in  a  color,  but  how  far  one  can  imitate  in  such 
cases  and  not  be  restrained  has  not  been  determined  to  the 
writer's  knowledge. 

Sometimes  there  is  no  question  as  to  form  or  ' '  get  up  ' ' 
of  the  sign  in  question,  but  it  has  been  so  placed  as  to  cause 
confusion  among  those  using  it,  or  seeking  to  be  guided  by  it. 
For  instance,  in  McFell  Electric  £  Telephone  Co.  v.  McFell 
Electric  Co.?1  a  company  was  organized  to  compete  with  an 


30  hiippman  v.  Martin,  5  Ohio  N.  P. 
120;  8  Ohio  Dec.  485-1S98.  Where 
one  moved  his  clothing  store  next 
door  to  a  clothing  store  called  "  The 
Globe "  and  placed  in  his  windows 
and  in  conspicuous  places  globes  rep- 
resenting the  earth  similar  in  appear- 
ance to  those  used  by  "  The  Globe," 
and  had  misleading  signs  arranged, 
and,  in  various  ways,  endeavored  to 
induce  the  public  to  believe  that  his 
store  was  "  The  Globe "  or  part 
thereof,  an  injunction  is  warranted 
restraining  him  from  unfair  competi- 
tion. 

31 110  111.  App.  182-1903.  The 
"McFell  Electric  and  Telephone 
Company  "  was  organized  some  years 
after  the  "McFell  Electric  Com- 
pany "  and  took  offices  in  the  same 


building  and  put  its  sign  on  the  bul- 
letin boai*d  of  the  building  directly 
above  that  of  the  old  company 
so  as  to  give  the  impression  that 
they  were  one  and  the  same  com- 
pany. Held,  "  The  circumstances 
justify  the  inference  that  it  was  for 
some  such  purpose  the  location  was 
selected.  This  is  not  open  and  honest 
competition.  It  has  every  appear- 
ance of  an  attempt  to  mislead  the 
public,  and  to  obtain  by  deception 
the  benefit  of  the  patronage  and 
clientage  enjoyed  by  appellee. 
Courts  of  equity  give  l'elief  against 
such  violations  of  the  rules  of  honest 
and  fair  dealings.  Citing  Merchants' 
Detective  Asso.  v.  Detective  Mercan- 
tile Agency,  25  111.  App.  250-1888  " 
(at  p.  186). 


Miscellaneous  Business  Names. 


185 


existing  company,  adopted  a  name  very  like  that  of  this  older 
concern,  and  took  offices  in  the  same  building.  The  new  com- 
pany then  caused  its  name  to  appear  on  the  bulletin-board  of 
the  building  directly  above  the  older  company's  name.  This 
was  held  unfair  competition. 

Again,  one  will  not  be  allowed  to  move  into  the  same  neigh- 
borhood with  a  rival  and  then  adopt  a  sign  which  is  so  similar 
to  that  of  the  rival  as  to  admit  of  the  possibility  of  confusion. 

That  the  courts  will  restrain  the  use  of  certain  signs  is  not 
to  admit  that  anyone  has  exclusive  property  in  any  shape,  size, 
color,  or  arrangement  used  on  the  sign.32  The  real  basis  of  the 
court's  interference  is  the  resulting  confusion.  If  a  dentist 
has  already  a  sign  reading  "  United  States  Dental  Associa- 
tion "  and  another  dentist  comes  along  and  exhibits  a  sign 
"  U.  S.  Dental  Rooms  "  very  like  it  and  customers  are  misled, 
the  court  considers  it  plainly  an  attempt  to  confuse  the  public 
and  pass  off  the  newer  office  as  the  one  longer  established.33 


S2Cady  v.  Schultz,  19  R.  I.  193- 
1S95;  32  Atl.  915;  29  L.  R.  A.  524. 

S3Cadij  v.  Schultz,  19  R.  I.  193- 
1895;  32  Atl.  915;  29  L.  R.  A.  524. 
Plaintiff  ran  dental  offices  which  he 
called  "  United  States  Dental  Asso- 
ciation," at  Providence,  R.  I.  De- 
fendant opened  an  office  in  Pawtucket 
and  exhibited  signs  closely  resembling 
in  shape,  size,  and  color  those  of  the 
plaintiff.  "  We  have  no  doubt"  (said 
the  court,  p.  194)  "  from  the  evidence 
that  these  imitations  were  inten- 
tional." Customers  were  misled. 
"  We  are  of  the  opinion  that  the 
complainant  can  have  no  property 
in  the  shape,  size,  color,  or  arrange- 
ment of  signs,  without  regard  to  the 
letters  which  they  bear,  nor  can  he 
claim  any  exclusive  use  of  the  words 
'  Scientific  dentistry  at  moderate 
prices.'  The  characteristics  of  the 
signs  do  not  differ  from  those  which 
ordinarily  appear  in  business  signs 
placed  as  these  are.     The  statement 


that  a  dentist  does  his  work  scien- 
tifically and  charges  moderate  prices 
for  it  is  one  which  any  dentist  may 
make  and  disseminate  if  he  can  do 
so  truthfully.  It  ought  to  be  ap- 
plicable equally  to  all  members  of  the 
profession.  Neither  of  these  things 
tends  to  injure  unlawfully  the  com- 
plainant's business.  But  we  think  the 
use  of  the  words  '  U.  S.  Dental 
Rooms,'  and  the  use  of  the  letters 
'  U.  S.'  upon  the  windows  of  defend- 
ant's office  is  a  plain  attempt  to  con- 
vey the  idea  that  the  business  car- 
ried on  there  is  a  branch  of  the  com- 
plainant's business,  and  should  be  re- 
strained "  (id.  p.  194).  The  case  of 
Colton  v.  Thomas,  2  Brewst.  (Pa.) 
308-1869;  7  Phila.  257,  is  to  the 
same  effect.  A  simulated  card  is- 
sued by  a  dentist,  or  sign  put  up 
by  him,  calculated  to  deceive  the 
uncautious  or  unwary  into  believing 
that  his  rooms  are  those  of  another 
dentist,    thereby    depriving    the    lat- 


ISO 


Unfair  Business  Competition. 


These  rules  apply  to  signs  of  all  descriptions  —  on  stores, 
wagons,  hats  of  employees,  and  all  moving  vehicles. 

§  92.  Street  Addresses,  Etc. —  Associated  closely  with  signs 
and  business  names  are  the  cases  arising  over  disputes  as  to 
the  use  of  the  street  addresses.  It  is  not  necessary  to  point  out 
that,  sometimes,  confusion,  as  in  the  use  of  business  addresses, 
may  be  of  serious  importance.  For  instance,  "  Number  10 
South  Water  Street  "  was  widely  advertised  by  Hall,  as  the 
place  where  he  made  threshing  machines.  A  rival  came  along, 
and  located  an  office  in  South  Water  street,  but  made  his 
goods  two  miles  away.  Despite  this  he  advertised  that  his 
goods  were  made  at  "  Number  10  South  Water  Street."  The 
court  held  that  these  facts  showed  a  proper  subject  for  the 
interference  of  equity  on  the  ground  that,  by  establishing  a 


ler  of  his  just  business,  will  be  re- 
strained. Johnson  v.  Hitchcock,  3  N. 
Y.  Supp.  680-1888  (Sup.  Ct.  Sp. 
Term).  Plaintiff,  a  real  estate  auc- 
tioneer, extensively  advertised  sub- 
urban lots  for  sale  on  the  installment 
plan,  and  used  conspicuously  in  his 
advertising  the  representation  of  a 
flag  with  stars  arranged  in  an  effect- 
ive and  striking  way  along  the  bor- 
ders. Held,  that  he  was  entitled  to 
restrain  defendant  from  using  an  ad- 
vertisement of  a  similar  kind, —  the 
representation  of  a  flag  closely  re- 
sembling plaintiff's  in  design.  Good- 
win v.  Hamilton,  19  Pa.  Co.  Ct.  652- 
1S97;  6  Pa.  Dist.  705.  Where  a 
hotel  proprietor  maintains,  for  carry- 
ing travelers  to  and  from  the  station, 
a  line  of  hacks  with  the  name  of  his 
hotel  on  them,  the  owner  of  a  rival 
hack  line  will  be  restrained  from 
placing  the  same  words  upon  his  con- 
veyances. De  Youngs  V.  Jung,  7 
Misc.  (N.  Y.)  56-1894;  27  N.  Y. 
Supp.  370.  Plaintiff  used  its  corpo- 
rate name,  "  De  Youngs,"  as  a  trade- 
mark or  trade  name  in  its  photo- 
graphic business.     Defendant,   Solo- 


mon Jung,  then  engaged  in  a  similar 
business  one  block  away  from  the 
plaintiff,  using,  on  signs,  stationer}*, 
etc.,  the  name  "  The  Youngs "  in 
script  similar  to  that  employed  by 
the  plaintiff,  and  with  a  similar  dash 
under  the  words.  Although  defend- 
ant's business  was  only  two  or  three 
years  old  his  circulars  referred  to  the 
well-known  "  reputation  of  our  work  " 
and  contained  copies  of  medals 
awarded  at  the  Exhibition  of  1876. 
Held,  that  it  was  unfair  competition. 
Interlocutory  injunction  granted. 
Eggers  v.  Ilink,  63  Cal.  445-1883. 
Plaintiff  sold  "Philadelphia  Beer," 
and  his  sign  consisted  of  a  row  of 
barrels  marked  "  P.  B.,"  with  "  Depot 
of  the  Celebrated "  above,  and 
"  Philadelphia  Lager  Beer "  below. 
Defendant  used  a  similar  sign  except 
that  "  F.  B."  was  substituted  for  "  P. 
B."  and  "  Fredericksburger "  for 
"Philadelphia."  Held,  that  plain- 
tiff's sign  could  not  be  protected  as 
a  trade-mark  —  it  was  rather  a  de- 
scription of  the  beer  and  for  all  that 
appeared,  defendant  had  an  equal 
riffht  to  its  use. 


Miscellaneous  Business  Names. 


187 


business  at  a  particular  address,  the  public  from  the  name  and 
description  used  came  to  know  where  or  in  what  manner  it 
was  carried  on,  and  hence  the  owner  of  it  had  acquired  a 
property  in  the  name.34 


S4  The  Glen  &  Hall  Mfg.  Co.  v.  C. 
S.  Hall,  61  N.  Y.  226-1874.  For 
thirty  years,  Joseph  Hall  manufac- 
tured threshing  machines  at  No.  10 
South  Water  street,  in  Rochester,  N. 
Y.  Defendant,  Charles  Hall,  bought 
out  Joseph  Hall  and  adopted  as  his 
trade-mark  "The  Old  Joseph  Hall 
Agricultural  Works,  No.  10  South 
Water  Street,  Rochester,  New  York." 
Later,  plaintiff,  in  1S69,  opened  an 
office  near  defendant's,  and  printed 
on  its  bills  and  signs  "  The  Glen  & 
Hall  Manufacturing  Company,  Num- 
ber 10  South  Water  Street,  Roch- 
ester, N.  Y."  The  plaintiff's  shops 
were  not  in  Rochester  and  were  two 
miles  away  from  the  shops  of  the 
defendant.  It  took  the  office  in 
Water  street  and  adopted  the  "  Num- 
ber 10  "  with  the  intention  of  inter- 
fering with  the  defendant's  business. 
Held,  it  was  a  species  of  property 
and  on  that  ground  is  under  the  pro- 
tection of  a  court  of  equity.  It  was 
not  denied  by  the  plaintiff  that  the 
words  "  Number  ten "  did  not  cor- 
respond to  any  street  number.  It 
was  the  opinion  of  the  court  that  the 
invasion  of  the  defendant's  right 
was  a  proper  ground  for  the  pro- 
tection of  equity  and  that,  in  an 
action  brought  by  the  plaintiff,  a 
counter-claim  on  the  part  of  the  de- 
fendant alleging  that  he  is  the  owner 
of  the  name  that  the  plaintiff  has 
wrongfully  used,  and  that  plaintiff 
be  restrained  from  such  use  and  be 
ordered  to  pay  damages  will  be  up- 
held. "  It  would  follow,  from  these 
principles,  that  if  a  person  had  estab- 


lished the  business  at  a  particular 
place,  from  which  he  has  derived,  or 
may  derive,  profit  and  has  attached 
to  that  business  a  name  indicating  to 
the  public  where  or  in  what  manner 
it  is  carried  on,  he  has  acquired  a 
property  in  the  name  which  will  be 
protected  from  invasion  by  a  court 
of  equity,  on  principles  analogous 
to  those  which  are  applied  in  case 
of  the  invasion  of  a  trade-mark  "  (id. 
p.  231),  and  the  name  may  be  severed 
from  the  place  where  it  has  been 
used,  for  "  It  seems  plain  that  if  a 
banking-house  has  acquired  a  name, 
such  as  that  of  Baring  Brothers, 
though  there  were  no  partner  of  the 
name  of  Baring,  it  would,  on  general 
principles  of  law,  and  independent  of 
the  statute  preventing  the  use  of  fic- 
titious names  have  a  property  in 
such  name,  without  reference  to  the 
particular  place  where  the  business 
was  carried  on.  Though  the  name 
might  be  inseparable  from  the  busi- 
ness, it  would  be  separable  from  the 
premises ;  so  that  the  business  might, 
for  example,  be  carried  on  on  the 
opposite  side  of  the  street."  Har- 
per v.  Pearson,  3  L.  T.  N.  S. 
547.  Defendants  occupied  a  place 
formerly  used  by  Harper  &  Pear- 
son. They  did  not  have  the  clay 
mines  used  by  that  firm,  but  they 
advertised  that  they  were  "  late  Har- 
pers &  Moore."  Followed  in  Glen, 
etc.,  Co.  v.  Hall,  61  N.  Y.  226-1874. 
See  also  Marsh  v.  Billings,  7  Cush. 
322.  Croft  v.  Day,  7  Beav.  84-1843. 
The  "  Day  &  Martin  blacking  "  was 
put  up  in  bottles  with  a  label,  etc., 


188 


Unfair  Business  Competition. 


§  93.  Use  of  Suffix  u  &  Co.,"  Etc.— One  person  may  use 
a  name  with  the  suffix  "  &  Co."  This  fact  does  not  estop  him 
from  showing  that  he  alone  is  the  real  party  in  interest.35 

§  94.  Names  of  Newspapers  and  Magazines. —  Most  of  the 
litigation  involving  title  to  newspaper  names  arises  because 
of  the  fact  that  the  full  name  of  a  paper  is  seldom  used  in 
speaking  of  it.  "  The  New  York  Evening  Post  "  and  "  The 
Saturday  Evening  Post  "  are  referred  to  merely  as  "  The 
Post."  In  London  and  New  York  "  The  Times  "  is  well- 
known,  yet  the  person  using  the  term  in  one  city  does  not  mean 
what  is  commonly  meant  by  the  same  name  in  the  other  city. 


containing  as  the  place  of  manufac- 
ture "97  High  Holborn."  The  ar- 
ticle was  made  by  the  executors  of 
the  surviving  partner  of  Day  &  Mar- 
tin, who  continued  the  business  in 
their  name.  The  defendant,  Day,  a 
nephew  of  the  testator,  associated 
with  a  person  named  Martin  and  set 
up  a  blacking  manufactory,  using 
the  old  firm  name  and  labeling  their 
bottles  in  a  manner  closely  resem- 
bling those  of  the  old  establishment. 
In  the  cut  on  the  label  they,  however, 
substituted  the  royal  arms  for  those 
of  the  original  firm,  and  inserted 
"  901  Holborn  Hill,"  in  the  place  of 
"  97  High  Holborn."  Lord  Langdale 
said  the  defendants'  contrivances 
were  calculated  to  mislead  the  bulk  of 
the  unwary  public  into  the  impres- 
sion that  the  new  concern  was  con- 
nected with  the  old  manufactory  and 
thus  to  benefit  the  defendant,  to  injure 
the  plaintiff,  and  to  deceive  the  pub- 
lic; and  he,  therefore,  directed  an  in- 
junction to  issue.  Pierce  v.  Franks, 
15  L.  J.  (Ch.)  N.  S.  122  (Jan.  13, 
184G).  There  the  complainant  was 
in  the  habit  of  selling  tooth-brushes 
and  nail-brushes  on  which  were 
stamped  "  Smyth's  Bond  Street,"  that 
being  the  trade-mark  to  which  he  was 


entitled;  and  they  also  had  stamped 
on  them  certain  figures  and  letters 
which  were  his  private  marks,  and 
were  used  to  distinguish  the  different 
sizes  and  patterns.  The  bill  alleged 
that  the  defendant  made  and  sold 
brushes  which  were  stamped  with  the 
same  words  and  the  same  private 
trade-marks.  An  injunction  was 
granted  restraining  the  defendant 
from  selling  brushes  on  which 
"  Smyth's  Bond  Street "  was 
stamped.  Street  v.  Union  Bank,  30 
Ch.  Div.  156-1885.  Street  &  Co.,  of 
Cornhill,  for  a  long  time  used 
"  Street,  London,"  as  a  telegraphic 
address.  In  1882  same  words  were 
registered  as  telegraphic  address  of 
defendant.  Injunction  asked.  Plain- 
tiff was  advertising  concern.  Defend- 
ant was  a  bank.  Their  business  did 
not  conflict.  Held,  that  "All  the 
court  is  asked  to  prevent  is  merely  an 
inconvenience.  To'  my  mind,  the 
Union  Bank  of  Spain  and  England 
has  done  nothing  unlawful "  (at  p. 
158). 

35  Jones  v.  Goodrich,  17  111.  380 
Holier  v.  Lambert,  2  Campb.  548 
Teed  v.  Elworthu,  14  East  210 
Greenleaf  Evidence  278. 


Miscellaneous  Business  Names.  189 

Consequently,  when  two  papers  are  set  up  in  the  same  locality 
having  names  which  when  used  in  common  parlance  will  be 
confusing,  some  legal  adjustment  is  required  to  preserve  the 
rights  of  the  owners  of  each  paper  in  its  name.  If  some  one 
should  start  in  New  York  the  "  Manhattan  Herald  "  as  a 
morning  paper  and  put  it  out  in  form  in  any  way  resembling 
the  present  "  New  York  Herald,"  the  latter  paper  would  have 
reasonable  grounds  for  demanding  judicial  interference. 

The  rules  which  apply  to  such  cases  are  very  similar  to 
those  spoken  of  in  connection  with  trade  names;  and  the  use 
of  such  names  will  be  forbidden  or  regulated  where  deception 
or  the  likelihood  of  fraud  is  shown.36 

The  same  may  be  said  also  of  publications  other  than  news- 
papers, such  as  magazines,  sheet  music,  and  music-books, 
series  of  books,  encyclopedias,  dictionaries,  directories,  and 
the  like. 

There  can  be  no  copyright  property  acquired  in  such  a  name 
as  "  The  Mail,"  "  The  Post,"  "  The  Herald."  The  "  London 
Times  "  could  not  restrain  the  publishing  of  a  "  Newcastle 
Times  "  or  a  "  Bristol  Times  "  in  those  towns.  Yet  it  could 
doubtless  restrain  a  rival  from  setting  up,  at  London,  a  com- 
peting paper  as  "  The  London  Morning  Times."  For  instance 
to  start  "  The  Grocer  "  when  the  "American  Grocer  "  was 
being  published  and  was  commonly  known  as  "  The  Grocer  " 
was  held  unfair.37 

38  Robertson  v.  Berry  &  Co.,  50  Md.  "American  Grocer,"  which  was  known 
591-1878.  A  publication  is  property  commonly  as  the  "  Grocer."  In  1875 
and  there  is  no  reason  why  it  should  its  editor  resigned  and  started  "  The 
not  be  the  subject  of  the  law's  pro-  Grocer "  on  the  same  block  in  New 
tection.  To  put  out  a  colorable  simu-  York  on  same  side  of  the  street, 
lation  of  it,  which  may  mislead  the  Later  the  plaintiff  moved  and  the  de- 
public  into  supposing  that  it  is  the  fendant  did  likewise,  to  the  same 
literary  article  they  had  in  mind  to  block  as  plaintiff  again.  Held,  that 
obtain  and  read,  is  an  act  of  de-  decision  below  refusing  injunction 
ception  which  injures  the  publishers.  was  error.  Walter  v.  Emmot,  54  L. 
Munro  v.  Tousey,  129  N.  Y.  38-  J.  (Ch.)  N.  S.  1059-1885.  "The 
1891;  29  N.  E.  9;  14  L.  R.  A.  245n.  Evening  Mail "  began  to  be  published 

37  American       Grocer       Publishing  in  17S9,  and  in  1S68  the  name  was 

Assn.  v.  The  Grocer  Publishing  Co.,  changed    to    "  The    Mail."      The    de- 

25  Hun  (N.  Y.)  398-1881.    Plaintiff  fendant     began     to     publish     "  The 

for  many   years   had   published   the  Morning  Mail  "  in  1885.    Plaintiff  al- 


190 


Unfair  Business  Competition. 


Newspapers  and  other  periodicals  are  individuals  and  have 
peculiar  traits  which  are  of  value  to  them  just  as  persons  have 
like  qualities.  Each  has  a  name  which  may  be  a  fanciful  one 
created  for  it  or  it  may  be  a  combination  of  common  words  of 
the  language.    In  either  case  it  is  of  prime  and  essential  im- 


leged  that  defendant's  paper  would 
soon  become  "  The  Mail,"  and  had  al- 
ready begun  to  be  so  called,  and 
hence  the  public  would  be  misled  to 
the  injury  of  plaintiff.  Evidence  of 
letters  and  business  intended  for 
plaintiff,  which  had  gone  to  defend- 
ant, was  admitted,  and  other  evidence 
of  confusion.  Held :  "  It  is  not  a 
question  of  property;  it  is  a  ques- 
tion whether  what  has  been  done  by 
the  defendant  is  in  reason  calculated 
to  induce  people  to  take  his  goods  as 
those  of  the  plaintiff,  or,  in  other 
words,  to  pass  off  his  goods,  what- 
ever they  may  be,  as  the  goods  of 
the  plaintiff"  (id.  p.  1061).  Lord 
Lindley  said :  "  The  name  of  a  paper 
is  a  very  valuable  property.  There 
is  no  doubt  about  that;  but  it  is 
property  of  a  vei*y  peculiar  kmd. 
The  owner  of  a  newspaper  has  not  a 
copyright  in  the  name,  and  what  is 
quite  as  important  in  the  legal  point 
of  view  as  the  name,  is  that  to  which 
the  name  is  annexed  and  which  that 
name  denotes.  Take  the  expression 
'  The  Mail '  or  '  The  Times,'  there  is 
no  copyright  in  that  expression,  and 
the  same  words  may  be  used  with 
impunity  with  reference  to  other  mat- 
ters, or  in  other  places  where  there 
is  no  possibility  of  infringing  any- 
thing like  a  trade-mark."  Clement 
v.  Maddick,  5  Jur.  N.  S.  592- 
1859.  The  proprietor  of  "Bell's 
Life  in  London  and  Sporting 
Chronicle  "  obtained  an  injunction 
restraining,  the  proprietors  of  the 
"  Penny    Bell's    Life    and    Sporting 


News "  from  using  any  title  which 
included  "  Bell's  Life,"  by  which 
name  the  complainant's  paper  was 
known  familiarly.  Commercial  Ad- 
vertiser Assn.  v.  Haynes,  49  N.  Y. 
Supp.  938-1898  (head-note)  :  "A 
newspaper  will  not  be  restrained 
from  using  the  name  '  New  York 
Commercial,'  in  connection  with  a 
vignette  between  the  words  '  York ' 
and  '  Commercial '  and  with  another 
title  in  conspicuous  letters  imme- 
diately beneath  the  name,  because  of 
its  similarity  to  the  name  of  a  news- 
paper, '  The  Commercial  Adver- 
tiser,' where  the  type  and  arrange- 
ment are  dissimilar;  where  one  is  an 
evening  paper,  devoted  to  general 
news,  and  the  other  is  a  morning 
paper,  which  confines  itself  to  com- 
mercial, financial,  and  shipping  news, 
and  the  price  is  different;  where  the 
only  evidence  of  injury  is  that  or- 
ders for  advertising  intended  for 
plaintiff  are  frequently  addressed  to 
the  '  Commercial,'  and  that  other  pa- 
pers in  quoting  from  plaintiff's  pa- 
per frequently  give  credit  to  the 
'  New  York  Commercial ;'  and  where 
the  only  evidence  of  injury  consists 
in  expressions  of  opinion,  which  are 
controverted  by  other  witnesses, — 
since  the  facts  do  not  justify  the  con- 
clusion that  the  use  of  the  name  by 
the  defendant  is  calculated  to  deceive 
any  purchaser  or  advertiser  of  com- 
mon intelligence."  Bell  v.  Locke,  8 
Paige  (N.  Y.)  75-1840.  Plaintiff 
published  a  paper  entitled  the 
"  Democratic  Republican  New  Era." 


Miscellaneous  Business  Names. 


191 


portance  to  the  paper  that  its  identity  be  not  lost,  that  it  be 
not  confused  with  any  other  paper.  The  New  York  Sun 
strives  for  and  possesses  a  real  individuality  —  a  mental  and 
intellectual  attitude  which  is  an  ear-mark  on  all  its  work.  A 
paper  has  principles,  it  has  a  creed,  it  has  a  history,  a  past 


Defendant  had  formerly  been  asso- 
ciated with  plaintiff  in  the  issue  of  a 
paper  called  the  "  New  Era,"  but  its 
publication  for  more  than  a  year  and 
a  half  had  been  discontinued.  De- 
fendant now  began  to  publish  a  pa- 
per called  the  "  New  Era,  revived  by 
Richard  Adams  Locke,  its  original 
editor."  The  device  or  emblem  at 
the  head  of  defendant's  paper  dif- 
fered considerably  from  that  on  the 
plaintiff's  paper.  Held,  that  there 
was  no  such  probability  of  deception 
as  to  entitle  plaintiff  to  restrain  de- 
fendant from  publishing  his  paper 
under  the  title  "  New  Era."  Forney 
v.  Engineering  News  Publishing  Co., 
10  N.  Y.  Supp.  814-1890.  Plaintiff 
published  a  monthly  periodical  of 
limited  circulation  called  "  The  Rail- 
road and  Engineering  Journal,"  re- 
sulting from  the  consolidation  of  the 
two  periodicals,  one  of  which  was' 
known  as  "  The  American  Railroad 
Journal."  Plaintiff's  periodical  was 
sometimes  called  "  Forney's  Railroad 
Journal."  Defendant  published  a 
weekly  periodical  which,  after  sev- 
eral changes,  was  called  "  Engineer- 
ing News  &  American  Railway  Jour- 
nal." The  abbreviated  title  "  Engi- 
neering News "  was  used  on  letter- 
heads and  was  the  title  by  which  the 
paper  was  ordinarily  known.  Held, 
that  in  the  absence  of  evidence  that 
actual  confusion  resulted,  plaintiff 
was  not  entitled  to  restrain  defendant 
from  using  the  words  "  Railway 
Journal."  Borthwick  v.  Evening 
Post,  37  Ch.  Div.  449-1SSS.     Plain- 


tiff owned  the  Morning  Post ;  defend- 
ant the  Evening  Post.  Action 
brought  to  restrain  defendant  from 
the  use  of  the  word  "  Post "  or  any 
title  of  which  that  word  formed  a 
part.  The  papers  were  different  in 
many  respects.  Defendant  gave  evi- 
dence that  the  word  "  Post "  had 
been  applied  to  newspapers  fre- 
quently in  the  past  in  England.  The 
Morning  Post  was  established  in 
1772.  There  was  evidence  of  several 
cases  of  actual  deception.  Perpetual 
injunction  granted  restraining  the 
defendant  from  using  the  words 
'"  Evening  Post."  On  appeal  this 
judgment  was  reversed,  the  court 
holding  that  they  are  asked  to  draw 
the  inference  that  the  defendant  as- 
sumed the  name  "  Post "  with  the 
intention  of  obtaining  part  of  the 
trade  of  the  plaintiff  from  the  fact 
-that  there  have  been  applications  to 
the  Morning  Post  for  twenty  copies 
of  the  Evening  Post,  but  there  is 
no  evidence  that  a  single  copy  less  of 
the  Morning  Post  has  been  sold  by 
reason  of  the  defendant's  action. 
Held,  that  this  was  not  enough  to 
warrant  the  interference  of  the  court. 
The  court  also  put  its  decision  on  the 
ground  that  the  two  papers  were  not 
competing  papers,  inasmuch  as  one 
was  a  rooming  and  the  other  an  even- 
ing paper;  that  the  get-up  of  the  pa- 
pers were  different.  That  the  court 
should  be  satisfied  that  the  pocket  of 
the  plaintiff  will  be  injured  before 
they  granted  an  injunction. 


192 


Unfair  Business  (  'om petition. 


good  or  bad,  wliicli  it  must  live  up  to  or  live  down.  In  the 
one  case  it  is  important  to  its  owners  that  it  shall  not  lose  its 
identity  and  in  the  other  it  is  of  importance  to  the  community 
that  it  be  known  for  itself  and  not  be  able  to  mask  under  the 
name  of  a  more  respectable  neighbor.38 

Mr.  Browne,  in  his  treatise  upon  Trade-Marks,  sections  415 
to  118,  presents  a  very  interesting  synopsis  of  some  French 
cases.  In  one  of  them,  the  plaintiff's  journal,  the  "  Moniteur 
Universel  "  had  become  known  as  the  "  Moniteur."  The  de- 
fendant's paper  adopted  the  title  "  Moniteur  Officiel  "  of  the 
French  Empire.  It  was  held,  that  the  title  of  a  journal  is 
property,  and  the  use  of  the  word  Moniteur,  either  singly  or 


38  Matsell  v.  Flanagan,  2  Abb.  Pr. 
N.  S.  (N.  Y.)  459-1867  (Com.  PL). 
Plaintiffs    published    the    "National 
Police  Gazette,"  which  was  commonly 
known  as  tbe  "  Police  Gazette."    The 
defendants  published  a  paper  which 
was  an  imitation  of  the  plaintiff's  pa- 
per, with  nearly  the  same  title  and 
device,    called    "The    U.    S.    Police 
Gazette."      Held,    that    the    doctrine 
that  trade-marks  shall  not  be  simu- 
lated rests  upon  the  broad  principle 
of    protection    of    the    public.      "A 
newspaper   establishment   is   not   ex- 
cluded from  the  advantage  of  these 
rules.     It  is   a  species  of   property, 
and  the  rights  which  appertain  to  it, 
so  far  as  they  are  private  and  exclu- 
sive, are  entitled  to  the  protection  of 
the  laws.    Snowden  v.  Noah,  1  Hopk. 
(N.    Y.)    348-1825;    Bell    v.    Locke, 
8    Paige    N.    Y.)     75-1840.     "The 
title     of    a    newspaper    may    be    a 
purely    original    one,    and    the    pro- 
prietor   for   that   reason    entitled   to 
its    exclusive    use.      He    may    create 
a  word,  or  combination  of  words,  for 
the  particular  designation  of  his  pa- 
per, and  in  that  way  acquire  an  ex- 
clusive right  to  the  use  of  the  name 
employed.     He  may  combine,  as  the 


plaintiffs  have,  well-known  English 
words  in  common  use,  to  designate 
his  paper,  and  its  contents  may  in 
many  respects  be  multiplied  by  pub- 
lication in  other  prints,  but  the  pa- 
per will,  nevertheless,  be  original  in 
some,  if  not  in  many,  respects.  The 
individualities  of  editorial  life  are  as 
rarely  duplicated  as  those  displayed 
in  other  pursuits ;  and  the  intellectual 
vigor  distinguishing  the  character 
and  value  of  different  prints,  though 
equal  in  power,  will  be  essentially 
different  in  thought, —  in  the  prin- 
ciples announced  and  advocated,  and 
in  the  reasoning  by  which  the  same 
theories  are  advanced  and  sought  to 
be  established.  A  newspaper  in  its 
commanding  elements  is  the  result  of 
mental  labor,  and  should  be  pro- 
tected to  the  same  extent,  at  least 
in  the  use  of  symbols,  names,  and 
marks,  as  any  other  property.  It 
may  be  that,  as  it  changes  from  day 
to  day  or  week  to  week,  and  is  more 
or  less  re-created  by  each  publica- 
tion, becoming  as  it  were  the  mirror 
as  well  as  the  chronicler  of  the  times, 
it  is  better  entitled  to  such  protection 
by  reason  of  its  multiplied  original- 
ity." 


Miscellaneous  Business  Names.  193 

with  the  qualifications  "  Officiel,"  was  enjoined  for  the  reason 
that  it  incontestably  appeared  that  the  "  Moniteur  Universel," 
whether  as  a  daily,  political,  and  literary  sheet,  or,  as  an  his- 
torical collection,  had  always  been  known  by  the  simple  title 
"  Moniteur."  In  another  case  in  which  the  publication  was 
the  "  Press,"  the  "  Free  Press  "  was  enjoined,  although  the 
papers  belonged  to  different  parties  and  addressed  themselves 
to  different  classes  of  readers. 

In  another  case,  the  defendants  having  adopted  the  title 
"  Petit  Journal,"  which  was  the  title  of  the  paper  published  by 
the  plaintiffs,  added  the  words  "  de  la  Somme  "  which  were 
printed  in  smaller  characters.  The  judgment  declares  that  the 
title  of  a  journal  is  the  exclusive  property  of  its  founder,  and 
to  give  to  a  new  journal  the  title  already  belonging  to  another 
would  be  a  usurpation  of  property,  and  consequently  an  act 
of  an  unlawful  competition.  An  injunction  was  therefore 
granted  forbidding  the  further  use  by  the  defendants  of  the 
words  "  Petit  Journal." 

The  locality  in  which  a  paper  or  magazine  is  circulated  is  an 
important  element  in  determining  the  rights  of  the  parties  to 
the  name  of  it.  Two  papers  may  have  identical  names  and  no 
loss  results,  if  they  do  not  reach  the  same  territory  and  are 
not  read  in  the  same  communities.  In  a  recent  case  of  this 
sort  the  difference  in  size,  appearance,  price,  lack  of  proven 
intent  and  difference  in  locality  formed  basis  for  a  refusal  of 
injunction  by  the  court.39 

§  95.  Names  of  Plays,  Books,  Text-books,  etc. —  The  pub- 
lication or  production  of  a  play  by  one  not  entitled  to  use  its 

38  Investor  Publishing  Co.  of  Mass.  that    such    injury    has    actually    oc- 

v.  Dobinson,  82  Fed.  56-1897  (C.  C.  curred.      Gannett    v.    Ruppert,    127 

S.  D.   Cal.).     A  corporation  is  not  Fed.   962-1904    (C.  C.  A.  2d  Cir.), 

entitled  to  an  injunction  restraining  reversing  119  Fed.  221.     Cornplain- 

another  corporation  from  publishing  ant,    publishing    a    monthly    family 

a  periodical  bearing  a  name  similar  magazine  of  wide  circulation  entitled 

to  its  own  publication  where  the  two  "  Comfort,"   held   entitled  to  an  in- 

periodicals   are   published  in  distant  junction   against  the   publication   of 

states,  and  the  names  are  used  with  a  monthly  paper  under  the  title  of 

distinguishing    characteristics    which  "  Home  Comfort,"  which  covered  a 

render    injury    to    complainant    im-  somewhat  similar  field,  and  circulated, 

probable,   in    the  .absence  of   proof  in  part  at  least,  in  the  same  territory. 

13 


194 


Unfair  Business  Competition. 


name  or  its  subject-matter  will  be  enjoined  under  the  rules  of 
unfair  competition,  on  the  ground  that  both  the  rightful  owner 
and  the  public  are  entitled  to  protection  against  spurious  plays, 
viz.,  which  are  represented  to  be  what  they  are  not.40  The 
same  rule  holds  regarding  magazines41  and  text  books  on 
the  ground  of  various  resemblances  of  form,  size,  binding, 
printing,  general  get-up,  title,  etc.,  entirely  aside  from  ques- 
tions of  copyright,42  on  the  book  or  series  of  books.43 


*°  Hopkins  Amusement  Co.  v.  Froh- 
man,  103  111.  App.  613-1902. 

"  Investor  Publishing  Co.  of  Mass. 
v.  Dobinson,  72  Fed.  603-1896  (C.  C. 
S.  D.  Cal.).  Plaintiff  publishes  "  The 
United  States  Investor."  Defendant 
began  to  publish  the  "  Investor " 
which  he  stated  to  be  published  by 
the  Investor  Publishing  Company. 
Injunction  was  granted. 

42  Metder  v.  Wood,  8  Ch.  Div.  606- 
1878.  "  Hemy's  Royal  Modern  Tutor 
for  the  Pianoforte "  was  published 
by  plaintiff  and  was  a  most  valuable 
work.  Defendant  employed  Hemy 
to  revise  an  old  work  of  Jousse, 
which  was  published  as  "  Hemy's 
New  and  Revised  Edition  of  Jousse's 
Royal  Standard  Pianoforte  Tutor." 
The  two  works  were  similar  in  size 
and  form,  but  the  color  of  the  plain- 
tiff's work  was  yellow  and  that  of 
the  defendant's  gray.  "  When  the 
defendant  came  to  print  the  cover, 
fair  trading  required  that  the  ex- 
terior of  the  work  should  bear  the 
name  of  Jousse  as  the  prominent 
word,  and  that  the  name  of  Hemy 
as  editor  should  be  made  subordinate. 
*  *  *  The  plaintiff's  book  was  no 
doubt  commonly  spoken  of  as 
'  Hemy's  Pianoforte  Tutor,'  for 
people  in  speaking  of  or  ordering  a 
book  do  not  commonly  use  the  full 
title."  Purchasers  asking  for  plain- 
tiff's book  had  been   given   defend- 


ant's. Held  unfair  competition. 
Cotton,  L.  J.,  said :  "Anyone  learn- 
ing that  '  Hemy's  Pianoforte  Tu- 
tor' was  the  best  for  beginners, 
and  going  into  a  shop  where  he  was 
shown  the  work  published  by  the  de- 
fendant would  naturally  say :  '  Oh 
this  is  no  doubt  it,  this  is  Hemy's, 
I  will  take  it.'  "  (id.  p.  612).  Potter  v. 
McPherson,  21  Hun  (N.  Y.)  559-1880. 
Since  1863  plaintiffs  made  "  Payson, 
Dunton  and  Scribner's  National  Sys- 
tem of  Penmanship,"  which  became 
known  as  the  "  National  System  of 
Penmanship."  Defendants  published 
"  Independent  National  System  of 
Penmanship."  The  name  and  system 
were  never  copyrighted  or  patented. 
Held,  "  an  inspection  of  the  books 
discloses  the  facts  that  they  are  pub- 
lished substantially  in  the  same  form 
so  far  as  general  appearance,  bind- 
ing, and  color  of  the  covers  are  con- 
cerned; and  upon  the  cover  of  the 
defendants'  book  the  phrase  '  Na- 
tional System  of  Penmanship  '  which 
has  long  been  title  of  the  plaintiffs' 
publication  is  printed  in  the  same 
manner,  the  same  size  and  form  of 
letters,  and  occupying  the  same  posi- 
tion as  they  do  upon  the  cover  of 
the  plaintiffs'  book.  The  resemblance 
of  the  words  and  letters  composing 
the  phrase  is  as  complete  as  it  could 
well  be  made  *  *  *  and  the  con- 
clusion seems  to  be  well  warranted 


Miscellaneous  Business  Names. 


195 


Reprints  and  restatements  of  books  in  other  language  ac- 
companied by  unfair  statements  to  the  effect  that  the  reprint 
is  really  the  original,  will  be  enjoined.44 


that  *  *  *  it  was  the  result  of  de- 
sign upon  their  part  to  imitate  the 
plaintiffs'  book"  (id.  p.  565).  In- 
junction restraining  use  of  phrase 
"  National  System  of  Penmanship." 
Mack  v.  Fetter,  L.  R.  14  Eq.  431-33- 
1872.  Plaintiff  published  "The 
Birthday  Scripture  Text  Book."  De- 
fendant then  published  "  The  Chil- 
dren's Birthday  Text  Book."  Master 
of  Rolls  Romilly  held:  Defendants 
"  are  not  entitled  to  publish  a  work 
with  such  a  title,  or  in  such  a  form  as 
to  binding  or  general  appearance,  as 
to  be  a  colorable  imitation  of  that  of 
the  plaintiff." 

43  Social  Register  Assn.  v.  Howard, 
60  Fed.  270-1894  (C.  C.  N.  J.). 
Complainant  published  in  New  York, 
from  time  to  time,  a  hist  of  names 
and  addresses  of  persons  of  social 
standing  in  New  York  and  its  vicin- 
ity, including  Orange.  This  publica- 
tion was  entitled,  and  became  well 
known  as  the  "  Social  Register." 
Held,  that  this  title  would  be  pro- 
tected as  a  trade-mark,  and  that  de- 
fendant would  be  enjoined  from  ap- 
plying the  name  "  Howard's  Social 
Register  "  to  a  similar  list  of  selected 
persons  residing  in  Orange.  Social 
Register  Assn.  v.  Murphy,  128  Fed. 
116-1904  (C.  C.  R.  I.)  (head-note): 
"  While  the  words  '  Social  Register,' 
adopted  as  the  title  of  a  series  of 
books  containing  lists  of  persons  se- 
lected by  the  compiler,  may  in  asso- 
ciation, constitute  a  trade-mark, 
neither  word  alone  can  be  so  appro- 
priated, and  the  fact  that  complain- 
ant published  such  a  book  under  the 
title  '  Social  Register,  Newport,'  does 


not  entitle  it  to  enjoin  the  use  by 
defendant  of  the  title  '  Newport 
Social  Index '  for  a  similar  publica- 
tion, there  being  no  proof  that  any 
deception  was  intended  or  resulted, 
such  as  to  constitute  unfair  com- 
petition." G.  &  C.  Merriam  Co.  v. 
Straus,  136  Fed.  477-1904  (C.  C.  S. 
D.  N.  Y.).  Complainants,  publishers 
of  Webster's  Dictionaries,  charged 
the  defendants,  although  there  was. 
no  copyright  infringement,  with  un- 
fair competition  in  the  manner  in 
which  they  had  used  the  word  "  Web- 
ster's." "  But  there  may  be  a  com- 
mercial property  in  books  as  well  as 
a  literary  property,  and  when  a  pub- 
lisher has  imparted  to  his  books  pe- 
culiar characteristics  which  enable  the 
public  to  distinguish  them  from  other 
books  embodying  the  same  literary 
property,  and  to  recognize  them  as 
his  peculiar  product,  there  is  no  rea- 
son why  the  principles  which  inter- 
dict unfair  competition  in  trade 
should  not  afford  him  protection 
against  the  copying  of  the  character- 
istics by  rivals  "  (per  Wallace,  J.,  at 
p.  479). 

44  Black  v.  Ehrich,  44  Fed.  793- 
1891  (C.  C.  S.  D.  N.  Y.).  Complain- 
ants published  the  "  Encyclopaedia 
Britannica "  in  Great  Britain,  and 
put  it  upon  the  American  market 
through  authorized  publishers.  De- 
fendant offered  to  the  public  a  cheap 
reprint  of  the  work,  with  the  same 
name  and  the  same  contents,  except 
that  a  few  articles  copyrighted  in  the 
United  States  were  replaced  by  other 
matter.  The  advertisements  repre- 
sented the  work  as  an  American  re- 


196 


Unfair  Business  Competition. 


print,  with  certain  articles  rewritten, 
and  there  was  no  evidence  of  an  at- 
tempt to  mislead  the  public  as  to  the 
identity  of  the  work.  Held,  that  de- 
fendants were  at  liberty  to  publish 
the  volumes  under  the  title  "  Ency- 
clopaedia Britannica."  Harper  & 
Bros.  v.  Lare,  103  Fed.  203-1900  (C. 
C.  A.  3d  Cir.).  Complainant  pub- 
lished a  book  entitled  "  Farthest 
North,"  Nansen,  translated  from  the 
Norwegian  original,  written  chiefly 
by  Dr.  Nansen.  Defendants  subse- 
quently published  a  book  entitled 
"  The  Fram  expedition.  Nansen  in 
the  Frozen  World.  Including  earlier 
Arctic  Explorations,"  which  con- 
tained part  of  the  same  matter  as 
complainant's  book,  with  a  number 
of  similar  illustrations.  It  differed 
so  much,  however,  from  complain- 
ant's book,  in  cover  and  title  page, 
that  no  one  of  ordinary  intelligence 
could  mistake  one  for  the  other.  No 
deception  in  advertising  was  shown 
on  defendant's  part.  Held  no  unfair 
competition.  Maxwell  v.  Hogg,  L.  R. 
2  Ch.  App.  307-1867.  Hogg,  in 
1863,  registered  an  intended  new 
magazine  to  be  called  "  Belgravia." 
He  did  nothing  further  until  1866 
when  Maxwell,  ignorant  of  what 
Hogg  had  done,  projected  a  maga- 
zine with  the  same  name,  incurred 
considerable  expense  in  preparing  it, 
and  during  August  and  September 
advertised  it  extensively  as  about  to 
appear  in  October.  Hogg  then 
hastily  prepared  to  bring  out  his  own 
magazine  before  Maxwell's  could  ap- 
pear, and  published  it  September 
25th.  Maxwell's  magazine  appeared 
in  October.     Hogg  had  given  Max- 


well no  notice  or  caution  prior  to 
September  25th,  and  had  even  ac- 
cepted from  Maxwell  an  advertise- 
ment of  Maxwell's  magazine  to  ap- 
pear in  publications  of  Hogg.  Held, 
that  Maxwell's  advertisements  and 
expenditure  gave  him  no  exclusive 
right  to  use  the  name  "  Belgravia," 
and  that  Hogg,  on  the  other  hand, 
had  acquired  no  such  right  by  what 
he  had  done,  and  that  neither  party 
was  entitled  to  an  injunction  as 
against  the  other.  Estes  v.  Worth- 
ington,  31  Fed.  154-1887  (C.  C.  S. 
D.  N.  Y.).  Plaintiff  was  the  Ameri- 
can publisher  of  an  annual  series  of 
juvenile  books,  which  had  for  many 
years  been  widely  known  and  popu- 
lar under  the  name  "  Chatterbox." 
The  books  were  marked  by  distinc- 
tive characteristics  as  to  cover,  print- 
ing, etc.  Defendant  published  vari- 
ous juvenile  books  bearing  upon  the 
covers  the  title  "  Chatterbox,"  and 
simulating  in  appearance  and  deco- 
ration the  series  published  by  plain- 
tiff. Held,  that  defendant  was  not 
entitled  to  the  use  of  the  title  for 
such  books,  especially  when  coupled 
with  an  imitation  of  the  general  ap- 
pearance of  the  books.  Estes  v. 
Leslie,  27  Fed.  22-1886  (C.  C.  S.  D. 
N.  Y.).  Complainants  had  the 
American  rights  for  an  English 
series  of  juvenile  books  called 
"  Chatterbox."  Defendants  published 
books  under  the  name  "  Frank 
Leslie's  Chatterbox,"  employing  the 
same  method  of  selection  and  illus- 
tration, square  form  and  style  of  bind- 
ing, and  vignette.  Injunction  granted 
against  defendants. 


CHAPTER  VIII. 

Corporate  Names. 

Section    96.  Effect  of  a  state  charter  on  names  of  corporations. 

97.  Foreign  and  domestic  corporations  —  rights  of,  as  to  name. 

98.  Right  to  name  on  dissolution. 

99.  Names  of  charitable  corporations. 

100.  Names  of  fraternal  societies. 

101.  Abbreviations  of  corporate  names. 

102.  Affirmative  duty  to  differentiate  in  choosing  corporate  names. 

103.  Priority  in  time  of  use  of  a  name  is  ground  for  injunction. 

104.  Use  of  term  "  works,"  "  company,"  etc.,  by  a  concern  not  in- 

corporated. 

105.  Outgoing  stockholders  and  employees. 

106.  False  or  misleading  use  of  corporate  names. 

107.  Names  of  unincorporated  societies,  clubs,  etc. 

108.  Similarity  of  corporate  names,  what  is. 

Chief  Justice  Fuller  contends  that  there  are  no  distinctions 
to  be  drawn  in  the  rules  which  apply  to  names  used  as  corpo- 
rate names  and  those  used  in  a  firm  or  partnership.  "  But  if 
every  man  has  the  right  to  use  his  name  reasonably  and 
honestly,  in  every  way,  we  cannot  perceive  any  practical  dis^ 
tinction  between  the  use  of  the  name  in  a  firm  and  its  use 
in  a  corporation.  It  is  dishonesty  in  the  use  that  is  condemned, 
whether  in  a  partnership  or  corporate  name,  and  not  the  usa 
itself."1 

Personal  names,  like  one's  parents,  are  not  of  one's  own 
choosing;  but  a  corporate  name  is  chosen  by  the  incorporators 
themselves ;  hence  it  is  in  their  power  to  make  it  what  they  wilL 
That  being  the  case,  their  rights  arising  from  its  possession 
are  less  important  and  their  responsibility  for  its  use  is  greater 
than  in  the  case  of  their  own  personal  names. 

The  rules  laid  down  in  the  cases  cited  under  the  head  of 
Family  Names  are  in  a  general  way  applicable  to  such  corpo- 

'Howe  Scale  Co.  v.  Wyckoff,  Sea-  1905,  at  p.  136;  49  L.  ed.  972;  25 
mans   &    Benedict,  198   U.   S.   118-      Sup.  Ct.  609. 

[197] 


198 


Unfair  Business  Competition. 


rate  names  as  are,  in  part  or  in  whole,  made  up  of  family 
names.  Courts  deal  with  corporate  names  just  as  they  deal 
with  family  names.  No  advantage  accrues  to  a  name  of  a 
corporation  because  it  is  borne  by  a  corporation.2 

§  96.  Effects  of  a  State  Charter  on  Names  of  Corporations. 
— The  statutes  of  the  various  states  provide  for  the  registra- 
tion of  corporate  names,  but  forbid  the  registration  of  names 
so  nearly  identical  with  those  already  registered  as  to  create 
confusion,  or  the  incorporation  of  two  companies  which  bear 
such  similar  names.  The  fact  that  the  defendant  corporation, 
in  a  suit  for  unfair  competition  involving  its  name,  has  been 
chartered  by  some  state  government,  does  not  afford  it  a  com- 
plete defense  or  immunity  from  action  against  it  in  a  federal 
court  or  state  court  by  a  corporation  of  another  state,  where 


2  Celluloid  Mfg.  Co.  v.  Cellonite 
Mfg.  Co.,  32  Fed.  94-7-1887  (C.  C. 
N.  Y.).  "As  to  the  imitation  of  the 
complainant's  name.  The  fact  that 
both  are  corporate  names  is  of  no 
consequence  in  this  connection.  They 
are  the  business  names  by  which  the 
parties  are  known,  and  are  to  be 
dealt  with  precisely  as  if  they  were 
the  names  of  private  firms  or  part- 
nerships. The  defendant's  name  was 
of  its  own  choosing,  and,  if  an  un- 
lawful imitation  of  the  complain- 
ant's, is  subject  to  the  same  rules  of 
law  as  if  it  were  the  name  of  an  un- 
incorporated firm  or  company.  It 
is  not  identical  with  the  complain- 
ant's name.  That  would  be  too  gross 
an  invasion  of  the  complainant's 
right.  Similarity,  not  identity,  is  the 
usual  recourse  when  one  party  seeks 
to  benefit  himself  by  the  good  name 
of  another."  Cha<s.  S.  Higgins  Co. 
v.  Higgins'  Soap  Co.,  144  N.  Y.  462- 
€8-1895 ;  39  N.  E.  490 ;  27  L.  R.  A.  42. 
"  In  respect  to  corporate  names  the 
same  rule  applies  as  to  the  names  of 
firms  or  individuals,  and  an  injunc- 


tion lies  to  restrain  the  simulation 
and  use  by  one  corporation  of  the 
name  of  a  prior  corporation  which 
tends  to  create  confusion  and  to  en- 
able the  latter  corporation  to  obtain, 
by  reason  of  the  similarity  of  names, 
the  business  of  the  prior  one.  The 
courts  interfere  in  these  cases,  not 
on  the  ground  that  the  state  may  not 
affix  such  corporate  names  as  it  may 
elect  to  the  entities  it  creates,  but  to 
prevent  fraud,  actual  or  construct- 
ive." Per  Andrews,  C.  J.  Hazelton 
Boiler  Co.  v.  Hazelton  Tripod 
Boiler  Co.,  137  111.  231-33-1891; 
28  N.  E.  248.  "The  right  of  a 
corporation  to  the  use  of  its  name 
can  be  no  greater  or  different 
in  principle  than  that  of  an  indi- 
vidual." Merchants'  Detective  Assn. 
v.  Detective  Mercantile  Agency,  25 
111.  App.  250-1888.  A  corporate 
name  "  is  entitled  to  be  protected  in 
its  use  upon  the  same  principle  and 
at  least  to  the  same  extent  that  indi- 
viduals are  protected  in  the  use  of 
trade-marks"  (at  p.  255). 


Corporate  Names. 


199 


the  name  adopted  is  used  to  compete  unfairly  with  the  com- 
plainant company.3 

The  incorporation  of  an  organization  does  not  alter  in  any 
way  its  rights,  as  against  those  of  another  body  using  the  same 
or  a  similar  name.  The  act  of  incorporation  gives  it  no  right 
to  demand  that  a  rival  desist  from  using  the  common  name. 
If  damage  is  suffered  by  the  corporation  it  must  bear  it ;  for 
it  arises  out  of  the  folly  of  deliberately  incorporating  under 
a  name  the  incorporators  knew  was  already  being  used. 
Furthermore,  jDersons  desiring  to  incorporate  under  a  name 
they  have  previously  used  as  the  name  of  an  organization  not 
incorporated,  are  not  barred  from  so  doing  because  of  the 
fact  that  others  had  incorporated  under  that  name  subsequent 
to  the  time  they  began  to  use  it  as  a  name  of  an  unincorporated 
organization.  If  they  were  the  first  to  use  the  name  and  to  be- 
come known  by  it,  they  cannot  be  denied  the  right  to  incorpo- 
rate under  that  name,  because  others  have  adopted  their  name, 
and  preceded  them  in  incorporating  under  it.  Any  damage 
resulting  to  the  plaintiffs  from  such  incorporation  is  charge- 
able to  their  folly  in  choosing  a  name  already  in  use.4 


8  Peck  Bros.  &  Co.  v.  Peck  Bros. 
Co.,  113  Fed.  291-1902;  62  L.  R.  A. 
81  (C.  C.  A.  7th  Cir.).  "The  fact 
that  a  corporation  has  been  chartered 
by  a  state  under  a  certain  name, 
which  it  selected,  does  not  afford  it 
immunity  from  a  suit  in  a  federal 
court  by  a  corporation  of  another 
state  to  enjoin  it  from  prosecuting 
its  business  under  such  a  name,  where 
the  name  was  deliberately  adopted  by 
its  incorporators  in  imitation  of  com- 
plainant's, for  the  fraudulent  purpose 
of  deceiving  the  public  and  ap- 
propriating complainant's  good-will 
and  reputation"  (reporter's  note). 
Fort  Pitt  Building  ■&  Loan  Assn., 
etc.  v.  Model  Plan  Building  & 
Loan  Association,  159  Pa.  St.  308- 
1893;  Newby  v.  Oregon  Central  By. 
Co.,  1  Deady  609-1869;  Fed.  Cas. 
No.  10,144. 


*  Grand  Lodge  of  the  Ancient  Or- 
der of  United  Workmen  of  the  State 
of  Iowa  v.  Graham,  31  L.  R.  A.  133- 
1S95;  96  Iowa  592;  65  N.  W.  837. 
The  court's  opinion  in  this  case  was 
substantially  as  follows:  The  ques- 
tion is  on  the  exclusive  right  of 
the  plaintiff  to  the  name  Grand 
Lodge  of  the  Ancient  Order  of 
United  Workmen  of  Iowa  and  the 
letters  G.  L.  A.  0.  U.  W.  of  Iowa. 
It  was  argued  that  incorporating  un- 
der this  name  and  receiving  a  cer- 
tificate from  the  state  to  do  business 
under  this  name,  the  plaintiff  be- 
came entitled  to  its  exclusive  use. 
The  defendants  had  the  prior  right 
to  the  name,  and  the  fact  that  they 
were  not  incorporated  is  wholly  im- 
material. The  plaintiff  in  amending 
its  articles  of  incorporation,  and  in 
securing    its    certificates    from    the 


200 


Unfair  Business  Competition. 


§  97.  Foreign  and  Domestic  Corporations  —  Rights  of,  as 
to  Name. —  Foreign  corporations  must  be  subordinated  to 
domestic  corporations  so  far  as  the  policy  of  any  state  is  con- 
cerned; for  a  state  is  bound  to  protect  and  assist  first  tlio.se 
companies  incorporated  under  its  own  laws.  The  rights  of 
a  company  in  any  state,  except  its  home  state,  are  based  on 
comity.  Eights  of  citizens  of  other  states  must  be  subordi- 
nated to  the  rights  of  the  domestic  company.  The  Illinois 
courts  go  so  far  as  to  hold  that  a  foreign  company  has  no 


state  auditor  have  taken  the  name 
which  was  formerly  used  by  the  de- 
fendants, and  of  which  they  cannot 
be  deprived  simply  because  the  plain- 
tiff sees  fit  to  use  it  as  its  corporate 
name.  A  corporation  cannot  insist, 
after  recording  its  articles,  that  any 
person  or  persons  abandon  the  name 
which  they  have  previously  selected 
and  under  which  they  are  operating. 
Any  damage  resulting  is  due  to  the 
folly  and  indiscretion  on  the  part  of 
the  second  corporation  in  selecting  a 
name  already  in  use.  Lane  v. 
Brothers  &  Sisters  of  the  Evening 
Star  Society,  120  Ga.  355-1904;  47 
S.  E.  951.  An  incorporated  mutual 
benefit  society,  the  "  Brothers  &  Sis- 
ters of  the  Evening  Star  Society," 
maintained  or  controlled  a  dependent 
or  branch  society,  not  separately  in- 
corporated, entitled  "  Sons  and 
Daughters  of  the  Evening  Star  So- 
ciety." Certain  persons,  who  had 
been  officers  of  the  branch  society, 
repudiated  the  authority  of  the  in- 
corporated society,  and  applied  for  a 
corporate  charter  under  the  name  of 
"  Sons  and  Daughters  of  the  Even- 
ing Star  Society."  Held,  that  they 
should  be  restrained  by  injunction 
from  prosecuting  their  application 
for  a  charter  under  this  name.  The 
injunction     covered     other     matters 


also;  such  as  the  control  of  bank 
funds,  etc.  American  Clay  Mfg.  Co. 
of  Pa.  v.  American  Clay  Mfg.  Co.  of 
N.  J.,  19S  Pa.  St.  189-91-1901;  47 
Atl.  936.  Both  parties  possessed  the 
corporate  name  "American  Clay 
Manufacturing  Company."  Com- 
plainant was  organized  in  Pennsyl- 
vania, defendant  in  New  Jersey. 
Plaintiff  made  brick  for  buildings 
and  contemplated  making  fire-proof- 
ing brick.  Defendant  made  fire 
brick  and  sewer  pipes.  Later  de- 
fendant put  under  its  name  the 
words,  "  of  New  Jersey  "  in  red  ink. 
No  intended  injury  is  alleged,  but 
much  confusion  resulted  because  of 
the  similarity  of  the  names.  Defend- 
ant incorporated  subsequently  to  the 
plaintiff  and  began  to  do  business  in 
Pennsylvania  after  plaintiff  had  be- 
gun business  there.  Held :  "  In  case 
of  associations  voluntarily  formed 
and  named,  whether  chartered  or  not, 
there  is  an  opportunity  to  avoid 
such  difficulty  by  refraining  from 
choosing  a  name  identical  with,  or 
similar  to,  that  of  associations  al- 
ready in  existence."  The  defendants' 
name  caused  plaintiff  injury  and 
plaintiff  had  no  remedy  at  law,  and 
hence  the  case  was  within  the  juris- 
diction of  equity.  Held  also  that  the 
injury  was  not  de  minimis. 


Corporate  Names. 


201 


standing  in  its  courts  to  contest  a  right  to  use  a  name  which 
the  state  has  bestowed  on  one  of  its  own  companies.5 

We  do  not  believe  this  doctrine  is  generally  followed.  Most 
jurisdictions  prefer  the  conmion-law  rights  which  may  be  ac- 
quired in  a  name  to  the  rights  which  a  company  acquires 
by  the  mere  act  of  incorporation.6 

§  98.  Right  to  Name  on  Dissolution.  —  It  has  been  held 
that  where  a  corporation  has  ceased  to  exist,  the  incorporators 
are  partners  so  far  as  the  name  goes,  and  all  have  an  equal 
right  to  it.    It  would  seem  that  those  of  them  who  first  use  the 


6  Ilazelton  Boiler  Co.  v.  Hazelton 
Tripod  Boiler  Co.,  142  111.  494-1892; 
30  N.  E.  339.  "  The  Hazelton  Boiler 
Company "  was  organized  June  23, 
1888,  in  New  York.  "  Hazelton  Tri- 
pod Boiler  Company  "  was  organized 
February  29,  18S8,  in  Illinois.  Plain- 
tiff was,  therefore,  incorporated  after 
defendant.  "  But  the  complainant  is 
in  the  attitude  of  a  foreign  corpora- 
tion coming  into  this  state  and  seek- 
ing to  contest  the  right  to  the  use 
of  a  corporate  name  which  this  state, 
in  furtherance  of  its  own  public 
policy  and  in  the  exercise  of  its  own 
sovereignty,  has  seen  fit  to  bestow 
upon  one  of  its  own  corporations. 
For  such  a  purpose,  a  foreign  cor- 
poration can  have  no  standing  in  our 
courts.  Such  corporations  do  not 
come  into  this  state  as  a  matter  of 
legal  right,  but  only  by  comity,  and 
they  cannot  be  permitted  to  come  for 
the  purpose  of  asserting  rights  in 
contravention  of  our  laws  or  public 
policy.  It  is  competent  for  this  state, 
whenever  it  sees  fit  to  do  so,  to  debar 
any  or  all  foreign  corporations  from 
doing  business  here,  and  whatever  it 
may  do  by  way  of  chartering  cor- 
porations of  its  own,  cannot  be  called 
in  question  by  corporations  which  are 


here  only  by  a  species  of  legal  suf- 
ferance "  (id.  p.  505).  The  United 
States  courts  have  refused  to  follow 
this  case. 

8  Farmers'  Loan  &  Trust  Co.  v. 
Farmers'  Loan  &  Trust  Co.  of  Kan- 
sas, 1  N.  Y.  Supp.  44-1888;  21  Abb. 
N.  C.  104.  Blackwell's  Durham  To- 
bacco Co.  v.  American  Tobacco  Co. 
(N.  C),  59  S.  E.  123-1907.  Plain- 
tiff, a  domestic  corporation,  sought 
to  enjoin  a  defendant,  "  Black- 
well's  Durham  Tobacco  Company  of 
New  Jersey,"  from  conducting  a 
competing  business  under  that  name. 
It  was  not  alleged  or  shown  that 
plaintiff  had  been  incorporated,  or 
had  used  the  name  in  business,  prior 
to  its  use  by  defendant.  Held,  that 
plaintiff  was  not  entitled  to  the  in- 
junction; that  the  fact  that  it  was  a 
domestic  corporation  did  not  entitle 
it  to  use  its  name  as  against  the 
rights  acquired  by  user  by  the  for- 
eign corporation;  and  that  plaintiff 
could  not  raise  the  point  that  de- 
fendant had  not  complied  with  the 
statutory  requirements  for  doing 
business  in  North  Carolina,  this  being 
a  matter  that  could  be  availed  of 
only  by  the  st.'.te. 


202 


Unfair  Business  Competition. 


name,  without  objection  on  the  part  of  the  others,  would  be 
entitled  to  it.7 

§  99.  Names  of  Charitable  Corporations. —  The  fact  that  a 
corporation  is  an  eleemosynary  or  charitable  one  and  has  no 
goods  to  sell,  and  does  not  make  money,  does  not  take  it  out 
of  the  protection  of  the  law  of  Unfair  Competition.  Distinct 
identity  is  just  as  important  to  such  a  company,  oftentimes, 
as  it  is  to  a  commercial  company.  Its  financial  credit  —  its 
ability  to  raise  funds,  its  general  reputation,  the  credit  of 
those  managing  it  and  supporting  it,  are  all  at  stake  if  its  name 
is  filched  away  by  some  other  organization,  and  the  two  be- 
come confused  in  the  minds  of  the  public.  The  existence  of 
two  charitable  organizations  in  one  city  —  or  even  in  one  sec- 
tion of  the  country,  both  of  which  bore  names  in  which  the 
words  "Young  Women's  Christian  Association"  appeared, 
could  not  but  be  a  distinct  injury  to  one  or  the  other.  The 
evils  of  such  a  condition  are  clearly  shown  in  the  cases  given 
in  the  note  below.8 


T  Ottoman  Cahvey  Co.  v.  Dane,  95 
111.  203-1880.  In  1875  defendants 
and  Adams  organized  a  corporation 
under  laws  of  Michigan  called  "  the 
Ottoman  Cahvey  Co.,"  which  did  busi- 
ness in  Chicago.  In  1878  Adams  and 
others  organized  a  corporation  under 
the  Illinois  laws  — "  The  Ottoman 
Cahvey  Co.,"  located  in  Chicago. 
This  company  was  the  complainant. 
Held,  so  far  as  complainant  was  con- 
cerned, defendants  had  a  prior  right 
to  the  name.  Defendants  had  as 
much  right  to  use  the  name  as  the 
complainant.  As  the  complainant 
had  shown  no  equitable  ground  for 
relief  the  bill  was  dismissed.  The 
ground  on  which  the  complainant 
asked  relief  was  that  the  Michigan 
corporation  no  longer  legally  existed. 
That  being  so,  the  incorporators  were 
partners  and  had  a  right  to  any  name 
they  saw  fit  to  use. 

6  International  Committee  Y.  W.  C. 


A.  v.  Y.  W.  C.  A.  of  Chicago,  194  111. 
194-1902;  62  N.  E.  551;  56  L.  R.  A. 
888.  The  appellee  is  one  of  a  large 
number  of  associations  of  women, 
who  have  operated  under  the  name 
of  "  The  Women's  Christian  Asso- 
ciation "  or  "  The  Young  Women's 
Christian  Association."  Appellee  in- 
corporated in  1877  under  the  name 
"  The  Women's  Christian  Associa- 
tion," which  name  was,  in  1887, 
changed  to  "  The  Young  Women's 
Christian  Association  of  Chicago." 
Two  local  associations  had  been 
organized  in  Chicago,  the  previously 
chosen  field  of  appellee,  under 
the  names,  respectively,  of  '  The 
North  Chicago  Young  Women's 
Christian  Association,'  and  '  The 
West  Chicago  Young  Women's  Chris- 
tian Association,'  and  in  furtherance 
of  that  work  the  appellant  has  issued 
and  circulated  through  the  mails  a 
publication    known    as   '  The   Young 


Corporate  Names. 


203 


The  New  York  Supreme  Court,  ou  application  for  prelimi- 
nary injunction,  has  held  that  a  corporation  organized  for  pur- 
poses of  gain  should  not  be  allowed  to  use  words  or  names 
which  have  "  acquired  a  special  application  by  reason  of  the 
charitable  nature  of  the  plaintiff's  services  to  the  poor  and 
helpless. ' ' 9 


Women's  Christian  Association  Quar- 
terly,' which  was  latterly  succeeded 
by  '  The  Young  Women's  Christian 
Association  Evangel.'  "  Much  con- 
fusion has  arisen  on  account  of 
the  similarity  in  name  of  the  ap- 
pellant and  appellee.  Letters  in- 
tended for  the  one  have  been 
delivered  to  the  other,  visitors  intend- 
ing to  call  upon  the  one  have  called 
upon  the  other,  and  donations  in- 
tended for  the  one  have  been  received 
by  the  other."  *  *  *  (at  pp.  197, 
198).  "Such  name  was  adopted  by 
the  appellant  advisedly,  and  for  the 
purpose  of  leading  the  general  pub- 
lic, and  the  persons  with  whom  it 
was  likely  to  be  associated,  and  from 
whom  it  hoped  and  expected  to  ob- 
tain support  by  way  of  donations, 
to  believe  that  it  stood  as  the  com- 
mittee and  representative  of  the  asso- 
ciations known  as  '  The  Young 
Women's  Christian  Association,'  then 
organized  in  the  field  where  it  ex- 
pected to  operate.  *  *  *  Such  con- 
duct, in  law,  amounts  to  a  fraud 
upon  the  public  and  appellee.  While 
it  is  true  that  generic  terms  or  mere 
descriptive  words  are  the  common 
property  of  the  public,  and  not  ordi- 
narily susceptible  of  appropriation 
by  an  individual,  that  fact  will  not 
prevent  the  issuing  of  an  injunction 
to  restrain  the  use  of  such  terms  and 
words,  at  the  suit  of  one  who  has  al- 
ready adopted  them,  where  the  evi- 
dence shows  a  fraudulent  design  and 


the  public  will  be  misled  "  (id.  p. 
199).  "We  are  of  the  opinion  the 
Appellate  Court  properly  held  that 
the  name  of  the  appellant  is  so 
similar  to  the  name  of  the  appellee 
and  so  arranged  as  to  deceive  and 
mislead  the  public  into  believing  that 
the  appellant  is  the  appellee,  or  a 
committee  or  representative  of  ap- 
pellee and  the  conference  with  which 
it  affiliates,  and  properly  directed  the 
superior  court  to  grant  a  perpetual 
injunction  against  the  appellant,  re- 
straining it  from  using  the  name 
'  International  Committee  of  Young 
Women's  Christian  Association,'  or 
any  other  colorable  imitation  thereof, 
etc.,  as  prayed  for  in  said  original 
and  supplemental  bills"  (id.  p.  201). 
The  fact  that  a  name  is  not  used  in 
a  commercial  business  or  trade  will 
not  prevent  equity  enjoining  its  use 
where  such  use  interferes  with  some 
other  name.  "  The  right  to  injunc- 
tive relief  depends  upon  the  use  by 
one  party  of  a  name  or  corporate 
designation  of  another  so  as  to  inter- 
fere with  its  business,  whatever  it 
may  be  —  not  necessarily  a  commer- 
cial or  trading  business."  The  So- 
ciety of  the  War  of  1812  v.  The 
Society  of  the  War  of  1812  in  the 
State  of  New  York,  46  App.  Div. 
(N.  Y.)  568-1900,  62  N.  Y.  Supp. 
355. 

9  Legal  Aid  Society  v.  Wage  Earn- 
ers' Legal  Aid  Assn.,  N.  Y.  L.  J., 
April  21,  1908,  Dowling  J. 


204 


Unfair  Business  Competition. 


§  100.  Names  of  Fraternal  Societies. —  Members  of  a  fra- 
ternal society  may  withdraw  and  organize  a  corporation  under 
any  name  they  desire,  provided  they  do  not  choose  one  so 
like  that  of  the  order  they  have  left  as  to  canse  confusion. 
The  name  ' '  Improved  Order  of  Knights  of  Pythias  ' '  was  held 
not  to  be  unfair  to  the  organization  known  as  "  Knights  of 
Pythias."10 

§  101.  Abbreviations  of  Corporate  Names. —  Corporate 
names,  like  personal  names,  are  used  as  trade  names ;  but  the 
weight  of  authority  is  against  the  proposition  that  a  corporate 
name  is  a  trade-mark.  In  Neivby  v.  Oregon  Cent.  Ry.  Co.,11  it 
was  held  that ' '  the  corporate  name  of  a  corporation  is  a  trade- 
mark from  the  necessity  of  the  thing."  (Head-note.)  Mer- 
chants' Detective  Assn.  v.  Detective  Mercantile  Agency,12  and 
Investor  Publishing  Co.  of  Mass.  v.  Dobinson,13,  are  to  the  same 
effect.  "Although  not  technically  a  trade-mark,  the  author- 
ities are  in  favor  of  holding  that  a  corporate  name  deserves 
the  same  consideration  as  a  trade-mark;  some  even  going  so 
far  as  to  hold  that  it  is  a  trade-mark,  and  will  be  protected 
as  such.  In  most  of  these  cases,  however,  it  will  be  found  that 
the  use  of  the  name  was  connected  with  some  article  of  mer- 
chandise, and  was  adopted  and  used  by  a  manufacturer,  mer- 


10  Grand  Lodge,  Knights  of  Pythias 
v.  Creswill,  128  Ga.  775-1907;  58  S. 
E.  163.  Preliminary  injunction 
granted  against  the  obtaining  of  a 
corporate  charter  by  persons  who  had 
been  acting  and  who  proposed  to  in- 
corporate under  a  name  claimed  to 
infringe  plaintiffs',  and  to  have  been 
selected  with  fraudulent  intent.  Su- 
preme Lodge,  Knights  of  Pythias  v. 
Improved  Order  Knights  of  Pythias, 
113  Mich.  133-1897;  71  N.  W.  470; 
38  L.  R.  A.  658.  Complainant  was 
incorporated  by  special  act  of  con- 
gress, there  being  already  a  volun- 
tary association  known  as  the 
"  Knights  of  Pythias."  Certain  mem- 
bers of  the  Knights  of  Pythias  with- 
drew and  organized   themselves  into 


an  unincorporated  society  known  as 
the  "  Improved  Order  of  Knights  of 
Pythias."  Held,  that  defendant's 
name  was  not  calculated  to  mislead. 
"  While  members  withdrawing  from 
a  fraternal  society  are  not  at  liberty 
to  associate  themselves  under  a  name 
so  like  the  name  of  the  parent  order 
as  to  be  calculated  to  deceive  ordi- 
nary persons  proceeding  with  ordi- 
nary care,  they  may,  subject  to  this 
limitation,  use  any  derivative  of  such 
name  that  they  may  see  fit  to  em- 
ploy "  (from  head-note). 

11 1  Deady  609-1869;  Fed.  Cas.  No. 
10,144. 

13  25  111.  App.  250-18S8. 

1S  72  Fed.  603-1896;  modified  in  82 
Fed.  56-1897. 


Corporate  Names.  205 

chant,  or  corporation  in  order  to  designate  the  goods  that  they 
manufactured  or  sold  and  to  distinguish  them  from  those  manu- 
factured or  sold  by  others,  to  the  end  that  they  might  be  known 
in  the  market  as  his."  14 

Corporate  names  or  parts  of  these  names  when  used  to 
designate  goods  or  business  houses,  or  as  trade  "  nicknames," 
are  trade  names  pure  and  simple,  in  most  instances,  and  can 
be  protected  as  such.  The  commercial  nickname,  or  abbreviated 
name,  is  often  more  valuable,  far  better  known,  and  more  care- 
fully guarded  from  use  by  rivals  than  the  formal  or  full  name 
from  which  it  is  taken.  Hence  it  is  that  the  law  of  trade  names 
applies  fully  to  the  names  of  corporations.  "  U.  M.  C."  for 
Union  Metallic  Cartridge  Co. ;  ' '  Winchester, ' '  for  Winchester 
Repeating  Arms  Co.;  "  Equitable,"  for  Equitable  Life  Assur- 
ance Society;  "  C.  B.  &  Q.,"  for  Chicago,  Burlington  &  Quincy; 
"  B.  &  A.,"  for  Boston  &  Albany,  are  instances  of  such  nick- 
names. One  hears  or  sees  the  full  corporate  name  used  seldom 
in  comparison  to  the  number  of  times  the  nickname  is  used. 
And  these  abbreviations  are  capable  of  protection  under  the 
rules  of  Unfair  Competition.  A  corporation  will  be  enjoined, 
regardless  of  its  actual  name,  if  it  does  business  under  any 
name  which  is  similar  to  that  of  a  rival.  For  instance,  the  "  In- 
ternational Trust  Co."  was  a  Massachusetts  corporation.  The 
defendant  was  chartered  in  Missouri  as  the  "  National  Loan 
and  Trust  Company,"  and  then  changed  its  name  to  "  Inter- 
national Loan  &  Trust  Company."  This  change  made  the 
names  of  the  two  companies  very  similar.  Defendant  did  busi- 
ness in  Boston  where  plaintiff  also  did  business.  It  was  held 
by  the  Massachusetts  court  on  the  question  as  to  whether  a 
foreign  corporation  could  be  enjoined,  that  if  a  foreign  corpo- 
ration carries  on  its  business  under  a  name  the  same  or  nearly 
identical  with  that  of  a  domestic  corporation,  it  should  be 
enjoined.  The  public  may  be  misled  and  the  domestic  cor- 
poration suffer.  The  foreign  corporation  ought  not  to  be 
allowed  to  escape  liability  on  the  ground  that  while  the  name 
that  it  actually  uses  is  the  same  or  similar,  its  corporate  name 
is  not.    Even  if  the  corporate  name  of  a  foreign  corporation  is 

"Farmers'  Loan  &  Trust  Co.  v.  ms,  1  N.  Y.  Supp.  44-1888;  21  Abb. 
Farmers'  Loan  &  Trust  Co.  of  Kan-      N.  C.  104. 


206  Unfair  Business  Competition. 

the  same  or  nearly  identical  with  that  of  a  domestic  corpora- 
tion, if  it  carries  on  its  business  under  a  different  and  dis- 
similar one,  there  is  no  reason  why  it  should  be  enjoined. 
"  No  harm  would  be  done  and  nobody  would  suffer."15 

If  an  abbreviation  consists  of  the  words  in  a  name  which 
describe  the  business  done,  or  describe  the  article  in  which  the 
concern  bearing  the  name  deals,  the  use  of  these  words  by  an- 
other will  not  be  enjoined,  in  the  absence  of  proof  of  these 
words  having  acquired  a  secondary  meaning. 

§  102.  Affirmative  Duty  to  Differentiate  in  Choosing  Cor- 
porate Names.—  No  name  may  be  chosen  in  naming  a  corpo- 
ration which  will  cause  the  new  corporation  to  be  passed  off  as 
some  other  company  already  in  existence,  or  that  will,  when  at- 
tached to  the  goods  made  by  the  new  company,  pass  those 
goods  off  as  the  goods  of  some  other  company.  There  are 
statutes  relating  to  choice  of  corporate  names,  but  they  are  all 
state  statutes;  so  that,  outside  of  the  names  of  corporations 
created  under  the  laws  of  the  home  state,  the  incorporators 
can  take  any  name  —  but  at  their  peril ;  and  if  the  incorpora- 
tors choose  a  misleading  name,  they  may  be  enjoined,  al- 
though their  company  be  organized  under  the  laws  of  a  state 
far  away  from  the  home  state  of  the  complainant. 

The  court  scans  the  facts,  to  see  if,  at  the  time  the  naming 
was  done,  there  was  any  possibility  of  foreseeing  that  damage 
and  fraud  might  follow;  and  if  it  finds  there  was  it  will  enjoin. 

15  International  Trust  Co.  v.  Inter-  guage  in  the  statute  to  the  contrary." 

national    Loan    &     Trust    Co.,    153  American  Wine  Co.  v.  Kohlman,  158 

Mass.  271-1891;   26  N.  E.   693;  10  Fed.  830-1907   (C.  C.  Ala.).     Com- 

L.  R.  A.  753.  plainant  was  a  Missouri  corporation 

19  American  Order  of  Scottish  Clans  well  known  in  the  wine  trade  by  its 
v.  Merrill,  8  L.  R.  A.  320-1890;  151  corporate  name,*  American  Wine 
Mass.  55S ;  24  N.  E.  918.  "  When  Company.  Defendant  was  after- 
there  are  no  statute  provisions  as  ward  incorporated  in  Alabama  under 
to  the  choice  of  names,  and  parties  the  same  name.  There  was  no  alle- 
organize  a  corporation  under  general  gation  of  similarity  of  dress,  or  of 
laws,  it  may  be  that  they  choose  the  the  use  of  any  deceptive  device,  nor 
name  at  their  peril,  and  that  if  they  of  facts  showing  fraud  on  the  part 
take  one  so  like  that  of  an  existing  of  defendant  or  injury  to  complain- 
corporation  as  to  be  misleading  and  ant.  Held,  that  the  mere  similarity 
thereby  to  injure  its  business,  they  of  name,  under  these  circumstances, 
may  be  enjoined  if  there  is  no  Ian-  did  not  entitle  the  plaintiff  to  relief. 


Corporate  Names.  207 

It  is  hardly  an  0}3en  question  in  most  instances,  for  on  the 
incorporators  rests  the  affirmative  duty  of  differentiating  the 
name  of  a  new  corporation  from  all  other  names.17 

The  duty  to  differentiate  is  not  changed  or  lessened  because 
the  conflicting  name  already  in  existence  is  a  name  not  of 
another  corporation,  but  of  a  firm  or  an  individual  operating 
under  a  name  not  his  own.17a 

One  of  the  most  common  ways  of  naming  a  corporation  is 
to  use  the  personal  name  of  one  or  more  of  the  incorporators. 
This  method  renders  the  name  subject  to  all  the  conditions 
arising  from  use  of  personal  names  as  trade  names.  The  rules 
applicable  to  it  are  practically  the  same  as  those  relating  to 
the  use  of  personal  names  in  other  trade  names  such  as 
partnership  names.  There  is,  however,  this  difference,  as 
has  been  already  observed,  and  it  is  a  substantial  one.  It  is 
natural  for  the  person  most  interested  in  a  business,  whether 
corporate  or  otherwise,  to  name  the  concern  after  himself.  If 
the  concern  be  an  individual,  doing  business  alone,  it  is  de- 
cidedly the  usual  thing,  for  he  has  not  the  task  of  creating  a 
name  —  having  ready  at  his  hand  his  own  personal  name. 
Where,  however,  it  is  a  corporation,  a  name  must  be  created. 
He  may  use  his  own,  but  more  often  a  somewhat  fanciful  name 
will  be  chosen;  and  in  creating  that  name  an  affirmative  duty 
rests  on  the  incorporators  to  see  to  it  that  they  take  a  name 
which  will  not  conflict  with  others  already  in  use.  The 
Standard  Oil  Company  might  have  been  called  the  "  Rocke- 
feller Oil  Company,"  and  had  that  been  the  name  chosen  for 

17  F.  E.  De  Long  v.  De  Long  Hook  similarity  of  the  two  books  (for  they 

&  Eye  Co.,  89  Hun   (N\  Y.)    399-  were  not  identical)  was  sufficient  to 

1895;  35  N.  Y.  Supp.  509.    In  1899  warrant     injunction.       "The     pro- 

the  plaintiffs  put  on  the  market  the  moters  of  this  corporation  could  have 

"  De  Long   Hook   and   Eye,"   sewed  given  to  it  the  name  of  either  of  the 

on     cards     at     top     of    which     was  other    incorporators,    or    any    other 

printed   "  The   De   Long    Hook   and  name  they  liked,  provided  the  desig- 

Eye."     In  1892   0.   A.   De  Long,   a  nation  was  honestly  made  and  with- 

buyer   of    a    department    store,    con-  out  injury  to  others"   (p.  403). 

ceived    a   change   in    the   hooks    and  17a  Imperial  Mfg.  Co.  v.  Schwartz, 

formed  the  De  Long  Hook  &   Eye  105   111.   App.   525-1903.      See   also 

Co.,  and  put  hooks  on  cards  in  the  Matsell    v.    Flanagan,    2    Abb.    Pr. 

same    manner    as    plaintiffs.      Held,  N.  S.   (N.  Y.)   459-1867. 


208  Unfair  Business  Competition. 

it,  it  would  have  been  difficult  for  any  other  person  in  the  oil 
trade  named  Bockefeller,  to  have  enjoined  the  company 
utterly,  from  using  that  surname,  as  a  part  of  the  corporate 
name.  It  might  have  been  ordered  by  the  court  to  change  the 
name  to  the  "  John  D.  Rockefeller  Oil  Company."  But  when 
a  fanciful  name  like  "  Standard  "  was  taken,  a  word  which 
had  no  particular  connection  with  the  oil  business,  another 
oil  company,  which  already  had  taken  that  word  as  a  part  of 
its  name,  might  readily  have  invoked  the  rules  of  unfair 
competition  to  enjoin  the  new  company  from  using  the  word 
"  Standard." 

In  a  sense,  the  use  of  the  words  "  Rockefeller  "  and 
' '  Standard  ' '  were  both  optional ;  and  yet  there  is  a  decided 
difference  in  the  legal  aspect  of  the  act  of  choice  in  the  two 
cases,  when  examined  in  the  light  of  the  intent  which  the  law 
will  presume  every  trader  to  possess,  to  act  honestly  and 
fairly  in  all  his  dealings. 

The  Scottish  courts  have  held  that  it  is  unfair  to  give  a 
corporation  a  name  which  contains  the  same  family  name  as 
that  which  is  a  part  of  the  name  of  a  concern  already  in  that 
line  of  business,  and  injunction  will  issue  although  no  actual 
deceit  or  fraudulent  intent  is  shown.18  "A  man  is  not  always 
debarred  from  giving  his  own  name  to  a  corporation,  where  it 
happens  to  be  the  name  of  a  competitor,  if  he  does  it  for  some 
good  reason  and  in  such  a  way  as  not  to  mislead  the  public. 
His  name  may  be  of  value  to  him  because  it  suggests  his  skill, 
or  his  financial  ability,  or  something  else  that  belongs  to 
him."19 

The  United  States  Supreme  Court  sustains  the  rule  that 
"  one  corporation  is  not  entitled  to  restrain  another  from 
using  in  its  corporate  title  a  name  to  which  others  have  '  a 
common  right;'  " 20  and  adds  that  this  rule  is  applicable  to  all 
names  publici  juris.    The  decision  then  refers  to  the  necessity 

18  Dunlop  Pneumatic  Tyre  Co.  v.  20  Howe  Scale  Co.  v.  Wyckoff,  Sea- 
Dunlop  Motor  Co.  Ltd.,  22  R.  P.  C.  mans  &  Benedict,  198  U.  S.  118- 
533-1905  (Ct.  Sess.  Scotland).  137-8-40-1905,   49    L.    ed.    972;    25 

19  International  Silver  Co.  v.  W.  H.  Sup.  Ct.  609,  citing  Columbia  Mill 
Bogers  Corp.,  66  N.  J.  Eq.  119-36-  Co.  v.  Alcorn,  150  U.  S.  460-1893; 
1904;  57  Atl.  1037.  37  L.  ed.  1144;  14  Sup.  Ct.  141. 


Corporate  Names.  209 

or  nonnecessity  of  using  one's  personal  name  in  choosing  a 
business  name,  as  follows :  "  It  is  said  that  the  use  of  the  word 
'  Eemington  '  in  the  name  '  Remington-Sholes  '  was  unneces- 
sary, as  if  necessity  were  the  absolute  test  of  the  right  to  use. 
But  a  person  is  not  obliged  to  abandon  the  use  of  his  name  or 
to  unreasonably  restrict  it.  The  question  is  whether  his  use 
is  reasonable  and  honest,  or  is  calculated  to  deceive."  The 
position  of  the  court  is  summed  up  as  follows:  "  It  was 
natural  that  those  who  had  invented  the  machine,  and 
given  all  their  time  and  means  in  introducing  it  to  the 
public,  when  they  came  to  organize  the  corporation  which  was 
to  represent  the  culmination  of  their  hopes  and  efforts,  should 
choose  their  own  name  as  the  corporate  name.  In  doing  so 
I  think  they  were  exercising  only  the  common  privilege  that 
every  man  has  to  use  his  own  name  in  his  own  business,  pro- 
vided it  is  not  chosen  as  a  cover  for  unfair  competition.  They 
did  not  choose  the  complainant's  name  literally,  or  so  closely 
that  those  using  ordinary  discrimination  would  confuse  the 
identity  of  the  two  names,  and  that  differentiation  is  sufficient 
to  relieve  them  of  any  imputation  of  fraud."  *  *  *  "\ye 
hold  that,  in  the  absence  of  contract,  fraud  or  estoppel,  any 
man  may  use  his  own  name,  in  all  legitimate  ways,  and  as  the 
whole  or  a  part  of  a  corporate  name." 

All  this  is  unquestionably  law,  in  the  absence  of  unfair 
competition.  What  then  is  unfair  competition?  The  court 
here  defines  it  thus:  "  The  essence  of  the  wrong  in  unfair 
competition  consists  in  the  sale  of  the  goods  of  one  manufac- 
turer or  vendor  for  those  of  another,  and  if  defendant  so  con- 
ducts its  business  as  not  to  palm  off  its  goods  as  those  of  com- 
plainant, the  action  fails  "21  (id.  p.  140). 

21  Howe  Scale  Co.  v.  Wyckoff,  Sea-  vented  by   one   Sholes.      From   1880 

mans   &    Benedict,   198    U.    S.    118-  this  machine  was  called  the  "  Rem- 

3905;  49  L.  ed.  972;  25  Sup.  Ct.  609.  ington  "  and  "  Remington  Standard." 

E.   Remington   &   Sons,   first  a  firm,  In   1886   the   typewriting  branch   of 

afterward     incorporated,      manufac-  the   business,   with  the   right   to   use 

hired    the    "  Remington    Rifle,"    and  the     name     "  Standard     Remington 

the    "  Remington    Sewing    Machine."  Typewriter,"      was     transf  erred     to 

In  1873  it  began  to  manufacture  a  Wyckoff,    Seamans   &   Benedict,    the 

typewriting    machine,    the    most   im-  complainant.       Among     the     trade- 

portant    feature    of    which    was    in-  marks  registered  by  that  corporation 
14 


210 


Unfair  Business  Competition. 


The  fact  that  some  person  transfers  to  the  incorporators  full 
right  to  use  his  personal  name  as  part  of  the  corporate  name 
will  not  excuse  the  adoption  of  a  name  which  is  similar  to  one 
already  in  use.  In  the  first  place  no  person  has  a  right  to 
transfer  the  rights  to  his  name  for  use  for  such  a  purpose;22 


was  the  name  "Remington."  The 
Howe  Scales  Company,  the  defend- 
ant, was  the  sales  agent  of  the 
"  Remington-Sholes  Company,"  which 
manufactured  at  Chicago  a  machine 
called  the  "  Remington-Sholes "  or 
"  Rem-Sho  "  typewriter.  This  com- 
pany was  the  successor  to  a  company 
organized  in  1892  by  one  Sholes,  the 
son  of  the  inventor  above  mentioned, 
in  which  Franklin  Remington,  son 
of  a  former  president  of  E.  Rem- 
ington &  Sons,  acquired  an  important 
interest,  and  to  the  position  of  which 
he  contributed  much  time  and  money. 
Aside  from  the  use  of  the  name  Rem- 
ington, nothing  was  done  by  the  last- 
named  company  or  the  defendant  to 
promote  confusion  in  the  mind  of  the 
public,  and  that  company  advertised 
expressly  that  its  machine  was  not 
the  "  Remington  Standard  Type- 
writer." Held,  that  the  name  Rem- 
ington was  properly  used  by  the 
Remington-Sholes  Company,  and  that 
the  right  to  use  one's  name  in  an 
honest  manner  includes  the  right  to 
use  it  as  a  part  of  a  corporate  name. 
R.  W.  Rogers  Co.  v.  Wm.  Rogers 
Mfg.  Co.,  70  Fed.  1017-1895  (C.  C. 
A.  2d  Cir.).  The  various  Rogers 
cases  in  the  federal  courts  are  found 
in  66  Fed.  56;  70  Fed.  1017;  110 
Fed.  955;  113  Fed.  526;  118  Fed. 
133,  and  are  suits  brought  to  over- 
throw a  succession  of  attempts  to  ob- 
tain by  unfair  means  the  business  of 
one  Rogers,  by  various  other  persons 
named  Rogers,  and  by  corporations 
formed  by  persons  bearing  the  name 


Rogers.  "Wallace,  Ch'cuit  Judge,  said 
(70  Fed.  1019)  :  "  I  place  my  con- 
currence in  the  judgment  in  this 
cause  upon  the  broad  ground  that  a 
body  of  associates  who  organize  a 
corporation  for  manufacturing  and 
selling  a  particular  product  are  not 
lawfully  entitled  to  employ  as  their 
corporate  name  in  that  business  the 
name  of  one  of  their  number  when 
it  appears  that  such  name  has  been 
intentionally  selected  in  order  to  com- 
pete with  an  established  concern  of 
the  same  name,  engaged  in  similar 
business,  and  divert  the  latter's  trade 
to  themselves  by  confusing  the  iden- 
tity of  the  products  of  both,  and 
leading  purchasers  to  buy  those  of 
one  for  those  of  the  other.  No  per- 
son is  permitted  to  use  his  own  in 
such  manner  as  to  inflict  an  unneces- 
sary injury  upon  another.  The  cor- 
porators chose  the  name  unneces- 
sarily, and,  having  done  so  for  the 
purpose  of  unfair  competition,  can- 
not be  permitted  to  use  it  to  the  in- 
jury of  the  complainant"  (at  p. 
1019).  The  Supreme  Court  says  of 
these  words  of  Judge  Wallace  in 
Howe  Scale  Co.,  v.  Wyckoff,  Seamans 
&  Benedict,  198  U.  S.  118-1905;  49 
L.  ed.  972;  25  Sup.  Ct.  609:  "This, 
of  course,  assumes  not  only  that  the 
name  selected  was  calculated  to  de- 
ceive, but  that  the  selection  was  made 
for  that  purpose." 

52  Burrow  v.  Marce.au,  124  App. 
Div.  (N.  Y.)  665-1908.  Otto  Sarony, 
as  executor  of  Napoleon  Sarony,  who 
at  the  time  of  his  death  was  conduct- 


Corporate  Names. 


211 


and  secondly  the  incorporators  had  no  right  to  adopt  such  a 
name.23     "A  corporation  has  not  the  right  to  use  the  name 


ing  a  profitable  business  as  a  photog- 
rapher under  the  trade  name  "  Sa- 
rony," sold  the  good-will  and  trade 
name  of  the  business  to  plaintiff. 
Subsequently  Otto  Sarony  assumed  to 
permit  the  defendant,  who  was  al- 
ready a  photographer,  to  organize  a 
corporation  to  conduct  a  similar  busi- 
ness under  the  name  "  Otto  Sarony 
Company;"  this  company's  place  of 
business  was  close  to  plaintiffs.  Ac- 
tual deception  of  the  public  was  al- 
leged. Held,  on  demurrer,  that  a 
cause  of  action  for  an  injunction  was 
stated. 

23  Dodge  Stationery  Co.  v.  Dodge, 
145  Cal.  380-1904;  78  Pac.  879. 
Plaintiff  was  incorporated  in  August, 
1894.  J.  S.  Dodge  was  an  incorpo- 
rator, until  1890,  when  he  sold 
all  his  interest  in  the  company.  The 
business  was  generally  known  as 
"  Dodge's,"  its  sign  containing  only 
the  word  "  Dodge's."  In  January, 
1901,  J.  S.  Dodge  and  others  incor- 
porated the  "  J.  S.  Dodge  Company," 
took  a  store  in  the  same  block  with 
plaintiff's  store,  100  feet  away,  and 
put  up  a  sign  "  Dodge  will  occupy 
this  store,"  etc.  Defendant  also  used 
word  "  Dodge "  alone  on  sign  and 
stamped  envelopes  "  Dodge's,  209 
Post  Street,  S.  F."  There  had  not 
been  since  September  17,  1900,  any- 
one with  the  name  of  Dodge  connected 
with  plaintiff.  J.  S.  Dodge  had  been 
in  this  business  in  San  Francisco 
twenty-five  years,  and  during  +hat 
time  had  used  name  "  Dodge."  Held, 
that  by  sale  of  stock  Dodge  did  not 
sell  any  part  of  plaintiff's  good-will. 
By  selling  his  stock  he  did  not  agree 
not  to  enter  stationery  business. 
Dodge  had  the  right  to  enter  business 


in  his  own  name,  so  long  as  he  did 
not  try  to  pass  his  store  off  as  plain- 
tiff's store.  "  It  does  not  follow,  how- 
ever, that  he  could  confer  the  right 
to  use  his  name  upon  a  corporation 
for  the  purpose  of  enabling  that  cor- 
poration to  engage  in  a  business 
which  had  been  conducted  by  another 
corporation  under  a  similar  name, 
and  it  is  well  settled  he  could  not  do 
so.  This  must  be  especially  true 
where  he  himself  caused  the  use  of 
his  name  by  the  prior  corporation. 
The  name  given  to  a  corporation  is 
an  artificial  and  impersonal  thing,  se- 
lected arbitrarily  by  the  corporators 
themselves,  and  can  be  selected  from 
an  entire  vocabulary  of  names"  (p. 
388),  citing  De  Long  v.  De  Long 
Hook  &  Eye  Co.,  89  Hun  399-1895; 
35  N.  Y.  Supp.  509.  The  defend- 
ant's rights  are  distinct  from  those 
of  J.  S.  Dodge,  and  are  the  same  as 
if  he  had  never  been  connected  with 
it  at  all.  "  Whoever  its  incorporators 
might  be,  they  had  no  right  to  fraud- 
ulently adopt  a  name  similar  to 
plaintiff's  name  for  the  purpose  of 
palming  off  the  business  to  be  con- 
ducted by  the  new  corporation  as 
plaintiff's  business,  and  thus  invade 
the  rights  of  the  prior  corporation. 
Injunction  will  lie  to  restrain  the 
simulation  so  far  as  may  be  neces- 
sary to  protect  the  rights  of  the  prior 
corporation,  even  to  the  extent  of 
prohibiting  the  use  of  the  name  at 
all,  the  courts  interfering  in  such 
cases  solely  for  the  purpose  of  pre- 
venting fraud,  actual  or  construct- 
ive "  (id.  p.  3S9).  The  court  has 
power  to  restrain  a  company  from 
using  such  a  name  as  "  Dodge's." 


212  Unfair  Business  Competition. 

of  one  of  its  incorporators  for  the  purpose  of  unfair  compe- 
tition with  an  older  dealer,  where  it  is  likely  to  do  him  injury, 
and  it  will  not  be  permitted  to  use  that  name  if  it  is  the 
name  by  which  the  older  article  is  usually  called  for  and  de- 
scribed."24 In  Massam  v.  Thorley's  Cattle  Food  Co.,25  a  much 
cited  case,  Joseph  Thorley  had  made  cattle  food  called 
' '  Thorley's  Food  for  Cattle."  At  the  time  of  this  action  the 
name  meant  that  it  was  made  at  Thorley's  works.  It  did 
not  mean  food  made  by  a  particular  recipe  belonging  to 
Thorley.  The  defendant  got  hold  of  J.  W.  Thorley,  a  brother 
of  the  first  Thorley,  and  formed  "  J.  W.  Thorley  and  Com- 
pany, Limited,"  and  sold  "  Thorley's  Food  for  Cattle."  J. 
W.  Thorley  had  a  one  shilling  share  in  the  company  and  was 
employed  as  an  agent.  It  was  held  that  the  defendant  intended 
deceit. 

In  the  face  of  facts  showing  that  in  choosing  a  corporate 
name  the  incorporators  intended  to  profit  fraudulently  by  the 
reputation  of  someone  else,  they  will  not  be  heard  to  deny 
that  they  intended  to  do  so,  or  that  they  did  not  know  of  the 
existence  of  their  competitor,  or  that  it  was  an  accident  that 
the  names  are  similar.  Despite  all  pleas  of  this  sort  it  is  the 
duty  of  the  court  to  restrain  such  use.26  Lord  Halsbury,  Chief 
Justice,  in  The  North  Cheshire  &  Manchester  Brewery  Co., 

"  J.  &  P.  Coats,  Ltd.  v.  John  ance,  arrangement,  and  effect.  De- 
Coals'  Thread  Co.,  135  Fed.  177-79-  fendants  denied  intent  to  copy.  Held, 
1905.  that  failure  of  defendants  to  adopt 
25 14  Ch.  Div.  748-1880.  some  name  other  than  Garrett  (which 
28  W.  E.  Garrett  &  Sons  v.  T.  H.  they  claimed  to  have  adopted  because 
Garrett  &  Co.,  82  Fed.  472-1896;  24  T.  H.  Garrett  originated  the. idea  of 
C.  C.  A.  172.  Plaintiffs  made  "  Gar-  the  company)  was  evidence  of  its  in- 
rett's  Snuff."  Defendants  were  in-  tent  to  fraudulently  profit  by  the 
corporated  in  1895  by  four  men,  reputation  of  W.  E.  Garrett.  "  It  is 
one  of  whom  was  T.  IT.  Gar-  not  to  be  credited  that  the  imitations 
rett,  who  owned  two  and  one-  were  unintentional  or  accidental "  (id. 
half  shares.  The  cans,  packages,  p.  476),  but  were  made  with  intent 
labels  and  wrappers  of  defendant  that  retail  dealers  should  sell  it  as 
differed  from  plaintiff's  but  little,  ex-  "  Garrett's  Snuff,"  and  as  defend- 
cept  that  "  T.  H.  Garrett,  Louisville,  ant's  product  was  inferior  to  W.  E. 
Ivy.,"  was  substituted  for  "  W.  E.  Garrett's  snuff,  they  would  get  his 
Garrett,  Philadelphia."  The  color  prices,  thereby  reaping  large  profits, 
was  the  same,  type  similar  in  appear-  See  §  30. 


Corporate  Names. 


211 


Ltd.,  v.  The  Manchester  Brewery  Co.,  Ltd.,2,7  said  that  on  the 
question  as  to  whether  the  two  names  were  so  familiar  as  to  be 
calculated  to  deceive,  no  witness  would  be  entitled  to  say,  for 
the  reason  that  that  was  the  very  question  which  the  court  was 
called  upon  to  decide ;  that  from  the  mere  similarity  of  the  two 
names  and  the  fact  that  two  breweries  existed,  one  the  Man- 
chester Brewery  and  the  other  the  North  Cheshire  Breweryr 
unfair  competition  was  inevitable ;  and  that  the  fact  that  there 
was  undoubtedly  no  intent  to  defraud  was  quite  immaterial,  for 
the  court  must  restrain  from  that  which  is  injuring  another 
person,  however  inadvertently  or  innocently  it  may  be  done. 
These  rules  have  been  applied  by  the  House  of  Lords  to  a  con- 
solidation of  two  corporations  and  a  use  of  a  combination  of  the 
two  names  as  a  name  for  the  new  company,  holding  that,  if 
the  new  name  was  so  similar  to  one  already  in  existence  as  to 
cause  deceit  and  to  mislead,  it  should  be  enjoined.  Says  Lord 
Halsbury:  "  The  result  to  my  mind  is  that  everybody  who 
had  dealt  with  the  old  company,  seeing  this  amalgamated 
name,  would  send  their  order  to  the  new  address  and  not  to 
the  old  address  where  the  single  company  had  carried  on  its 
business.  That  would  be  an  ordinary  business  matter.  If 
they  first  came  to  the  conclusion  that  it  was  an  amalgamation 


"App.  Cas.  83-1899.  The  re- 
spondents, "  The  Manchester  Brew- 
ery Co.  Ltd."  had  carried  on  busi- 
ness under  that  name  for  years  in 
Manchester  and  elsewhere.  The  ap- 
pellants bought  an  old  business,  con- 
ducted under  the  corporate  name  of 
"  The  North  Cheshire  Brewery  Co., 
Ltd.",  the  brewery  being  at  Maccles- 
field, but  some  business  being  done  at 
Manchester.  Appellants  then  had 
themselves  incorporated  and  regis- 
tered as  "  The  North  Cheshire  & 
Manchester  Brewery  Co.  Ltd."  This 
was  done,  as  the  court  found,  with- 
out any  intent  to  deceive  the  public 
or  divert  respondent's  trade.  Held, 
that  as  a  matter  of  fact  the  name  of 
the  appellant  company  was  calculated 


to  deceive,  and  that  its  use  should  be 
enjoined.  "  When  I  see  that  in  the 
name  of  the  appellant  company  there- 
is  literally  and  positively  the  same 
name  as  that  of  the  rival  company, 
as  I  will  call  it,  and  that  it  is  only 
prevented  from  being  identical  in 
name  by  having  another  name  asso- 
ciated with  it,  I  should  think  myself 
that  the  inevitable  result  would  be 
that  which  appears  to  have  hap- 
pened,—  that  anyone  who  saw  the 
two  names  together  would  arrive  at 
the  conclusion  without  any  doubt  at 
all  that  the  two  companies,  both 
with  well-known  names,  both  in  the 
particular  neighborhood  with  which 
we  are  dealing,  had  been  amalga- 
mated." 


214  Unfair  Business  Competition. 

of  the  two  concerns,  their  next  proceeding  would  be,  unless 
they  had  certain  knowledge  of  the  matter  (and  of  course  when 
you  are  dealing  with  the  question  of  people  being  deceived, 
that  negatives  the  idea  of  their  having  certain  knowledge,  or 
else  they  could  not  be  deceived),  those  customers  as  a  matter 
of  business  would  direct  their  orders,  if  they  intended  to  re- 
main customers  of  the  old  firm,  to  the  address  of  the  new 
company  which  had  just  been  brought  out,  which  they  would 
think  included  the  old.  Can  that  be  permitted?  I  think  it 
cannot.  That  is  calculated  to  deceive,  and  that  is  the  very 
question  which  your  lordships  have  to  determine  "  (id.  p. 
85-86). 

In  Massachusetts,  it  is  held  that  the  combination  of  a  similar 
corporate  name,  similarity  in  the  business  done,  and  the 
nearness  of  the  stand  adopted  by  the  defendant  to  that  of  the 
plaintiff  will  justify  a  finding  of  fraudulent  conduct  on  de- 
fendant's part.28 

It  has  been  said  that  the  very  fact  that  a  body  of  associates 
organizing  a  company  take,  as  part  of  the  name  of  the  com- 
pany, the  name  of  one  of  their  number  which  is  the  same  or 
nearly  the  same  as  that  of  some  rival  who  has  an  established 
business,  in  most  cases  gives  rise  to  a  presumption  of  fraud. 
The  presumption  may  be  rebutted;  but  the  fact  remains  that 
despite  the  laudable  desire  of  a  promoter  or  incorporator  to 
make  Ins  own  name  a  part  of  the  company,  despite  his  common- 

28  Viano  v.  Baccigalupo,  183  Mass.  name  of  '  Boston  Trade  Peanut 
J  60-1903;  67  N.  E.  641.  The  plain-  Roasting  Company,'  a  name  almost 
tiff  under  the  name  "  Boston  Peanut  identical  with  the  plaintiff's  name  of 
Roasting  Co."  had,  at  time  defendant  '  Boston  Peanut  Roasting  Company,' 
entered  business,  been  carrying  on  its  together  with  the  fact  that  the  busi- 
business  at  94  Fulton  street  for  five  ness  done  by  the  defendant  is  identi- 
years.  Defendant  opened  his  shop  cally  the  same,  and  that  the  defend- 
on  Fulton  street  and  adopted  the  ant  has  selected  a  place  of  business 
same  identical  name,  except  he  put  not  only  in  the  same  city  but  on  the 
word  "  Trade  "  between  "  Boston  "  same  street.  That  justifies  a  finding 
and  "  Peanut."  Held,  by  Loring,  J. :  that  the  action  of  the  defendant  is 
"  The  plaintiff's  right  to  protection  calculated  to  induce  the  public  to 
•does  not  depend  on  the  defendant's  trade  with  the  defendant  under  the 
having  adopted  a  similar  single  word  belief  that  it  was  trading  with  the 
alone,  but  on  the  combination  adopted  plaintiff.  One  mistake  in  mail  or- 
by    the    defendant    of    the    business  ders  was  proved  at  the  hearing." 


Corporate  Names.  215 

law  right  to  use  liis  own  name  as  he  will,  the  trader  who  enters 
the  court  of  equity  with  greatest  claim  on  its  aid  is  he  who 
lias  striven  to  differentiate  his  goods  and  his  company  as  much 
as  possible  from  all  rivals,  and  to  sell  his  goods  on  their  merits, 
and  advertise  himself  and  his  house  in  as  individual  a  manner 
as  possible. 

That  persons  may  not  associate  themselves  under  a  name 
which  is  composed  of  names  of  rivals,  is  a  proposition  which 
does  not  need  discussion.  "  The  public  are  entitled  to  pro- 
tection from  being  misled  to  trade  with  parties  not  known  to 
them,  under  the  impression  that  they  are  doing  business  with 
an  established  firm  or  person  with  whom  they  have  been  ac- 
customed to  deal."20, 

§  103.  Priority  in  Time  of  Use  of  a  Name  is  Ground  for 
Injunction. —  Names  of  corporations  which  do  not  include 
personal  names  must,  of  course,  be  names  to  which  the  in- 
corporators of  neither  the  plaintiff  company  or  the  defendant 
company  have  any  such  individual  right  as  they  have  in  their 
own  family  name,  hence,  as  between  two  corporate  names,  not 
personal  in  character,  which  are  alike  or  similar,  the  one 
coming  into  existence  last  must  give  way  to  the  prior  one  for 
two  reasons:  (1)  Because  the  existence  of  both  will,  in  all 
likelihood,  cause  confusion;  (2)  because  of  the  right  of  prior- 
ity in  the  one  first  used.  It  is  not  necessary  that  any  long 
period  of  time  should  intervene  between  the  beginning  of  the 
use  of  the  name  first  used  and  that  of  the  second.  Thirteen 
months  has  been  held  sufficient.30 

19  Imperial  Mfg.  Co.  v.  Schwartz,  ,0  S.  Howes  Co.  v.  Howes  Grain- 
105  111.  App.  525-1903.  La  Societe  Cleaner  Co.,  46  N.  Y.  Supp.  165- 
Anonyme  des  Anciens  Etablissements,  1897.  The  "  S.  Howes  Company  " 
Panhard  et  Levassor  v.  Panhard-Le-  was  organized  in  January,  1895;  the 
vassor  Motor  Co.,  18  R.  P.  C.  405-  "  Howes  Grain-Cleaner  Company  "  in 
1901.  Seven  men,  none  of  whom  February,  1896,  the  latter  being 
bore  name  Panhard  or  Levassor,  named  for  its  president.  Both  corn- 
formed  defendant  company  in  Eng-  panies  manufactured  the  same  class 
land  and  registered  its  name.  Plain-  of  machinery.  Held,  that  the  latter 
tiff  did  not  do  business  directly  in  company  should  be  enjoined  from 
England.  Held,  defendants  should  using  its  corporate  name.  The  Aeci- 
be  enjoined  from  using  either  of  the  dent  Ins.  Co.  Ltd.  v.  The  Accident, 
names.  Disease,  &   General  Ins.  Corp.  Ltd., 


21G 


Unfair  Business  Competition. 


In  one  instance,  persons  who  began  doing  business  under 
the  name  "  American  Watchman's  Clock  Company,"  as  part- 
ners, in  summer  of  1901,  were  held  to  be  able  to  restrain  others 
from  organizing  a  corporation  in  May,  1902,  under  the  same 
name.31    See  §  71. 

§  104.  Use  of  Term  "  Works,"  "  Company,"  Etc.,  by  a  Con- 
cern not  Incorporated. —  The  fact  that  the  user  of  the  name,  in 
the  first  instance,  is  an  individual  or  partnership  engaged  in  a 
business  under  some  fanciful  or  symbolic  name  such  as  "  New 
York  Specialty  Works,"  or  "  Imperial  Manufacturing  Com- 
pany," and  not  a  corporation,  does  not  tend  to  defeat  the  right 
of  this  first  user  to  enjoin  one  subsequently  adopting  the  name, 
or  one  very  similar,  as  the  name  of  a  corporation.32     Such  a 


51  L.  T.  N.  S.  597-1884,  before 
Pearson,  J.,  in  chancery.  Plaintiff 
registered  its  name  in  1870,  but  bad 
existed  since  1849.  Defendant  regis- 
tered its  name  in  18S3,  and  plaintiff 
became  aware  of  the  fact  in  1884. 
Plaintiff  was  known  as  "  The  Acci- 
dent Co.,"  or  "  The  Accident."  Held, 
defendant  "  takes  a  title  which  is  so 
like  the  plaintiff's  title  that  I  am 
satisfied  by  the  evidence  before  me 
that  it  is  calculated  to  deceive,  and 
that  it  is  also  calculated  to  appro- 
priate to  the  defendant  company 
business  which  would  legitimately  go 
to  the  plaintiff  company"  (id.  p. 
598). 

31  Pettes  v.  American  Watchman's 
Clock  Co.,  89  App.  Div.  (N.  Y.)  345- 
1903;  85  N.  Y.  Supp.  900.  Plain- 
tiffs were  copartners,  and  part  of 
their  business  was  the  sale  and  in- 
stallation of  electric  time  detectors 
or  watchman's  clocks.  This  branch 
of  their  business  they  conducted  un- 
der the  name  of  the  "American 
Watchman's  Clock  Company,"  hav- 
ing in  the  summer  of  1901  filed  a  cer- 
tificate of  intention  to  do  business 
under  that  name.    In  May,  1902,  they 


executed  the  papers  necessary  to  in- 
corporate in  this  state  under  that 
name,  but  in  the  same  month  de- 
fendant was  incorporated  in  this 
state  under  the  same  name  for  the 
purpose  of  engaging  in  the  same 
business.  The  incorporators  of  the 
defendant  company  knew  that  plain- 
tiffs were  engaged  in  business  as 
above  mentioned  under  the  name 
adopted  by  them.  Held,  that  defend- 
ant should  be  restrained  from  the  use 
of  its  corporate  name  in  the  same 
business  as  plaintiffs. 

82  Imperial  Mfg.  Co.  v.  Schwartz, 
105  IU.  App.  525-1903.  Nesne  v. 
Sundet,  93  Minn.  299-1904;  101  N. 
W.  490.  In  1901  plaintiffs  entered 
into  a  partnership  at  Crookston,  un- 
der the  name  of  Crookston  Marble 
&  Granite  Works.  Two  weeks  later 
they  changed  their  name  to  the 
Crookston  Marble  Works,  and  since 
that  time  had  done  business  under 
that  name.  For  nine  years  prior 
thereto,  some  of  the  defendants  had 
done  a  like  business  at  Crookston  as 
partners  under  the  name  of  the  North 
Western  Marble  Works.  They  used 
the  words  "  Marble  Works  "  as  a  sign 


Corporate  Names. 


217 


simulation  of  a  name  will  be  enjoined  although  the  plaintiff  has 
used  the  name  in  such  a  manner  as  would  cause  it  to  import 
that  his  concern  was  a  corporation  when,  in  fact,  he  never 
had  incorporated  his  business  at  all.  The  fact  that  the  name 
which  the  defendant  attempts  to  use  has  been  previously  ap- 
propriated as  name  for  any  sort  of  business  concern,  by  an- 
other, is  sufficient  ground  to  warrant  an  injunction.  This  is 
not  universally  held,  however,  for  some  jurisdictions  regard 
words  like  "Works,"  "Company,"  "Association,"  as  im- 
porting that  the  concern  using  them  is  a  corporation,  and  that 
a  partnership  or  individual  can  have  no  property  in  a  name 
containing  such  words.33 

§  105.  Outgoing  Stockholders  and  Employees. —  It  is  en- 
tirely natural  that  one  who  has  gotten  skill  and  experience  in 


over  the  place  of  business,  and  dur- 
ing part  of  this  time  about  10  per 
cent,  of  the  letters  received  by  them 
were  addressed  "  Crookston  Marble 
Works."  In  1902  defendants  incor- 
porated under  the  name  "  Crookston 
Marble  Works."  Plaintiffs  adopted 
their  name  one  year  before  defend- 
ants organized  as  a  corporation. 
The  trial  court  found  no  intent  to 
compete  unfairly  on  the  part  of 
either  of  the  parties.  "  The  rule  is 
settled  that,  in  the  absence  of  statu- 
tory provisions  regulating  the  sub- 
ject, parties  organizing  a  corporation 
must  choose  a  name  at  their  peril, 
and  that  the  use  of  a  name  similar 
to  one  adopted  by  another  corpora- 
tion may  be  enjoined  at  the  instance 
of  the  latter,  if  misleading  and  cal- 
culated to  injure  its  business.  Newby 
v.  Oregon  Cent.  By.  Co.,  1  Deady 
609-1869;  Fed.  Cas.  No.  10,144; 
Holmes,  Booth  &  Haydens  v.  Holmes, 
Booth  <&  At  wood  Mfg.  Co.,  37  Conn. 
278-1870 ;  C.  S.  Higgins  Co.  v.  Hig- 
gins'  Soap  Co.,  144  N.  Y.  462-1895 ; 
39  N.  E.  490 ;  27  L.  R.  A.  42 ;  Cellu- 
loid Mfg.  Co.  v.  Cellonite  Mfg.  Co., 


32  Fed.  94-1887  (C.  C.  N.  Y.) ;  B. 
W.  Bogers  Co.  v.  Wm.  Bogers  Mfg. 
Co.,  70  Fed.  1017-1895;  17  C.  C.  A. 
576;  Plant  Seed  Co.  v.  Michel  Plant 
&  Seed  Co.,  37  Mo.  App.  313-1889. 

83  Clark  v.  Aetna  Iron  Works,  44 
111.  App.  510-1892.  Clark  sued  to 
prevent  defendant  using  the  words 
"Aetna  Iron  Works,"  on  gi'ound  that 
itj  had  acquired  the  right  to  use 
them  as  a  trade  name,  before  de- 
fendant's company  was  incorporated. 
Held,  that  the  "  words  import  a  cor- 
poration :  not  being  the  names  of 
persons,  but  of  an  entity  capable  of 
business."  Hazelton  Boiler  Co.  v. 
Hazelton  Tripod  Boiler  Co.,  142  111. 
494-1892;  30  N.  E.  339,  the  plaintiff, 
a  copartnership,  held  to  have  no 
property  in  a  name,  as  a  trade  name, 
which  imported  a  corporation.  Words 
like  "Association,"  "  Works,"  "  Com- 
pany," preceded  by  words  indicating 
the  kind  of  business,  are  used  as 
names  of  corporations.  Link  v.  A  rchi- 
tectural  Iron  Works,  24  111.  551- 
1860 ;  Perkins  Electric  Lamp  Co.  v. 
Hood,  44  111.  App.  449-1892;  The 
State  v.  McGrath,  75  Mo.  424-1882. 


218  Unfaik  Business  Competition. 

his  trade  or  business,  while  in  the  employ  of  another,  should 
wish  to  start  out  for  himself.  It  is  entirely  right  that  he  should 
use  his  own  name  for  the  new  concern;  but  he  cannot  do  so  in 
such  a  manner  that  from  his  so  setting  up  confusion,  fraud, 
and  loss  of  business  to  the  old  company  may  result.  The 
same  is  true  also  of  stockholders  of  a  corporation,  who 
leave  it  to  form  a  new  company.  Such  outgoing  stock- 
holders must  use  their  own  name  subject  to  the  rights  of  the 
company  with  whom  they  formerly  were  connected.34  In  this 
connection  see  the  chapter  on  Transfer  of  Trade  Names,  etc. 
A  stockholder  in  a  corporation  which  bears  his  family  sur- 
name, does  not  necessarily  lose  all  right  to  use  that  name  as  a 
business  name,  in  a  company  making  or  selling  the  same  com- 
modity as  the  corporation,  because  the  latter  sells  its  business, 
including  good-will  and  name.  He  will  be  enjoined,  however, 
from  passing  off  the  goods  made  by  the  new  company  as  those 
of  the  older  corporation  or  its  successor.35  Where  the  name 
has  as  its  principal  feature  the  name  of  a  person,  that  name 
is  likely  to  be  the  nickname  of  the  company,  and  for  a  person 
bearing  that  name  to  start  a  competing  company  with  that 
particular  name  as  the  basis  of  its  name  will  in  all  likelihood 
lead  to  deception.  In  the  words  of  the  Michigan  court  "  the 
natural  tendency  of  the  situation  would  be  to  divert  the  com- 
plainant's business.30  Outgoing  stockholders  of  a  corporation 
bearing  a  name  the  most  distinctive  part  of  which  is  the 
names  of  such  stockholders,  have  no  right  to  compete  with  that 
corporation,  under  a  new  corporate  name  so  similar  to  the  first 
as  to  mislead.  In  ordinary  speech,  the  "Alton,"  the  "  Bur- 
lington," the  "  Bock  Island,"  the  "  Central,"  are  used  instead 
of  the  full  names  of  these  companies.  In  a  similar  fashion  the 
striking  word  in  other  corporate  names  is  often  used  as  its 
name.     Hence  a  person  whose  name  is  thus  used  as  the  ab- 

84  Holmes,    Booth    &    Haydens    v.  own  names  subject  to  the  rights  of 

Holmes,  Booth  &  Atwood  Mfg.  Co.,  the  petitioners,  unless  relieved  of  that 

37    Conn.    278-1870.      Plaintiff    in-  inconvenience  by  their  consent." 

corporated     1853,     defendant     incor-  a!i  Donnell   v.    Herring-Hall-Marvin 

porated  1869.     Held,  that  "  until  its  Safe  Co.,  208  U.  S.  2G7-1908. 

(plaintiff's)      dissolution,     therefore,  3"  Prnberthy    Injector   Co.    v.    Lee, 

Holmes   and   Booth   must   use   their  120  Mich.  174-1899;  78  N.  W.  1078. 


Corporate  Names.  219 

breviated  name  of  a  corporation  will  be  enjoined  from  allowing 
his  name  to  be  assumed  by  another  company  in  such  fashion 
as  to  make  it  possible  that  this  second  company  may  become 
known  by  the  same  abbreviation.  Lamb  invented  a  process  of 
knitting.  The  product  was  called  "  Lamb  Knit."  He  left 
his  former  employee  and  started  the  Lamb  Glove  and  Mitten 
Co.  Dealers  were  misled  and  an  injunction  was  issued.37  Van 
Auken  left  the  "  Van  Auken  Co."  and  formed  the  "  Van 
Auken  Steam  Specialty  Co.,"  and  was  enjoined.38  Penberthy 
left  the  Penberthy  Injector  Co.  and  formed  a  partnership  which 
was  called  the  "  Lee-Penberthy  Manufacturing  Co.,"  and  he 
was  enjoined.  Said  the  court:  "  I  cannot  doubt  that  defend- 
ants intended  to  appropriate  a  portion  of  complainant's  good- 
will and  good  reputation.  I  cannot  doubt  that  the  natural 
tendency  of  the  situation  would  be  to  divert  the  complainant's 
business  to  the  defendants.  I  do  not  question  or  doubt  the 
general  natural  right  which  a  man  has  to  use  his  own  name 
in  his  own  business  without  interference ;  but  I  think,  in  a  case 
like  the  present  one,  such  right  should  be  guarded  by  language 
sufficiently  clear  and  explicit  to  notify  all  persons  that  the 
business  is  not  that  of  another.  I  do  not  think  this  has  been 
done  by  these  defendants,  and  I  am  of  the  opinion  that  com- 

87  Lamb  Knit  Goods  Co.  v.  Lamb  plaintiff  was  not  entitled  to  exclusive 
Glove  &  Mitten  Co.,  120  Mich.  159-  use  of  term  "  Lamb  Knit."  But 
1899;  78  N.  W.  1072;  44  L.  R.  A.  dealers  have  been  here  misled  by  the 
841.  Defendant  Lamb  organized  similarity  of  the  names  of  these  cor- 
Lamb  Knitting  Company,  which  was  porations,  as  business  of  both  parties 
bought  out  by  plaintiff.  Lamb  was  is  largely  gloves  and  mittens.  De- 
plaintiff's  superintendent  for  a  long  fendant  was,  therefore,  restrained 
period,  but  left  their  employ  April,  from  the  use  of  the  name  Lamb 
1892.  He  then  organized  defendant  Glove  and  Mitten  Company,  or  any 
company  and  began  to  make  goods  name  in  which  word  Lamb  — "  Lamb 
with  the  same  stitch  used  by  plaintiff,  Knitting  Machine  Company  " —  ap- 
which  claimed  all  rights  to  said  stitch  peared  in  connection  with  other  words 
and  trade-mark,  "  Lamb  Knit."  De-  indicating  a  business  similar  to 
fendant  alleged  "  Lamb  stitch  "  had  plaintiffs'. 

been  in  use  for  twenty-five  years  by  38  Van   Auken   Co.   v.    Van   Auken 

many    mills,    and    that    there    were  Steam   Specialty    Co.,   57    111.    App. 

various  Lamb  knitting  machine  com-  240-1894. 
panies  in  operation.     Held,  that  the 


220 


Unfair  Business  Competition. 


plainant  has  made  out  a  good  case,  and  is  entitled  to   the 
injunction  prayed  for,  with  costs  " 39     (p.  179). 

The  New  York  court  enjoined  one  who  sold  out  his 
interest  in  a  corporation,  the  "  Charles  S.  Higgins  Co.,"  from 
using  the  name  "  Higgins  Soap  Co.,"  because  he  used  it 
fraudulently  and  in  a  deceiving  way.  But  it  specifically  states 
that  a  man  may  use  his  own  name  "  even  when  such  use  is 
injurious  to  another  who  has  established  a  prior  business  of  the 
same  kind  and  gained  a  reputation  which  goes  with  the 
name. ' ' 40 


39  Penberthy  Injector  Co.  v.  Lee, 
120  Mich.  174-1899 ;  78  N.  W.  1074. 
Penberthy  invented  an  injector  for 
boilers  and  organized  the  Penberthy 
Injector  Company.  The  Penberthy 
injector  became  known  familiarly  to 
the  trade.  Six  years  later  Penberthy 
sold  out  to  the  corporation  all  his  in- 
terest and  engaged  in  a  partnership, 
the  "  Lee-Penberthy  Manufacturing 
Company,"  which  made  improved  in- 
jectors. They  located  on  the  same 
street  as  the  said  corporation.  In- 
junction granted.  Giacomo  Allegretti 
v.  The  Allegretti  Chocolate  Cream 
Co.,  177  111.  129-189S;  52  N.  E.  487. 
The  defendant,  a  corporation,  brought 
bill  against  Giacomo  Allegretti  alleg- 
ing it  was  owner  of  the  sole  rights, 
processes,  receipts,  and  methods  of 
manufacturing  certain  chocolate 
creams  and  of  the  trade-mark  "Alle- 
gretti;" that  Giacomo  Allegretti,  who 
was  a  former  employee  of  the  cor- 
poration, had  set  up  business  under 
the  name  Allegretti  &  Company  and 
claimed  to  be  originator  of  Allegretti 
creams,  and  made  and  sold  similar 
goods.  The  corporation  had  been 
making  these  goods  for  many  years. 
Held,  Allegretti  chocolates  were  for 
years  known  in  Chicago,  as  goods  of 
Allegretti  Bros.,  which  afterward  be- 


came appellee  company.  Defendant 
had  right  to  open  business  as  "Alle- 
gretti and  Company  "  provided  it  did 
so  without  any  intent,  act,  or  artifice 
to  mislead  dealers  in  the  market  or 
the  public  at  large  as  to  the  identity 
of  the  firm.  Held,  further,  that  public 
were  so  deceived.  The  defendants 
can  use  name  Allegretti  in  a  manner 
indicating  that  their  goods  are  "  man- 
ufactured and  sold  by  B.  F.  and  I. 
A.  Rubel  and  Giacomo  Allegretti  and 
not  by  Ignazio  Allegretti  or  the  Alle- 
gretti Chocolate  Cream  Company." 

40  Chas.  S.  Higgins  Co.  v.  Higgins 
Soap  Co.,  144  N.  Y.  462-1895;  39 
N.  E.  490 ;  27  L.  R.  A.  42.  In  1890, 
plaintiff  company,  organized  by  Chas. 
S.  Higgins,  purchased  from  him  and 
partner  their  soap  business  in  Brook- 
lyn. Three  hundred  thousand  dollars 
had  been  spent  in  advertising  "  Hig- 
gins Soap  "  subsequent  to  1879.  In 
1892,  Chas.  S.  Higgins  was  dis- 
charged from  the  company  and  with 
his  wife  and  family  organized  in 
New  Jersey  the  defendant  company 
and  put  up  soap  with  wrapper 
marked  "  Higgins  Soap  Co.,  Original 
Laundry  Soap,  Chas.  S.  Higgins 
President."  Held,  the  Higgins  Soap 
Co.  is  not  Chas.  S.  Higgins,  and  he 
cannot    appropriate   the  business   of 


Corporate  Names.  221 

The  object  sought  by  the  complainant  in  all  these  cases  is 
protection  for  the  business  he  has  built  up,  under  the  name 
he  is  using.  The  theory  of  the  Higgins  case  is  that  such  a 
merchant  is  remediless,  unless  the  defendant  is  acting  fraud- 
ulently; and,  by  inference,  that  if  the  loss  occurs  through  the 
unwitting  and  unintentional  act  of  the  defendant,  the  com- 
r^lainant  must  suffer  his  loss.  There  is  abundant  authority, 
however,  for  holding  that  he  who  thus  deprives  another  of 
Ms  business  is  taking  valuable  property  from  him,  if  not 
wrongfully,  at  least  unnecessarily  and  because  of  lack  of  due 
and  equitable  regard  for  the  rights  of  others ;  and  hence  equity 
will  comjoel  him  to  act  equitably.  This  does  not  mean  that 
the  defendant  must  lose  the  right  to  use  his  own  name ;  it  does 
mean  that  equity  will  regulate  his  use  of  his  name,  will  compel 
him  to  use  it  with  due  regard  for  the  loss  he  may  cause  others. 
Equity  cannot  assume  that  any  honest  man  will  wish  his 
business  to  be  continually  confused  with  that  of  a  competitor. 
See  §  58. 

§  106.  False  or  Misleading  Use  of  Corporate  Names.— 
It  is  always  unwise,  but  not  always  unlawful  to  use  a  false 
name  for  a  corporation.  So  long  as  no  one  is  injured  by  the 
false  name  and  no  one  objects  who  has  a  right  to  object,  such 
a  name  may  be  used.  But  so  often  does  it  happen  that  false 
names  are  made  use  of  to  effect  unfair  competition,  that  the 
courts  look  with  suspicion  on  any  name  that  is  false.  By  the 
term  "  a  false  name  "  is  meant  the  use  of  a  name  which  implies 
that  the  company  named  has  certain  features  which  it  has 
not.  If  it  be  named  "  Peck  Bros.  Co.,"  when  there  is  but 
one  Peck  in  the  company,  such  a  name  is  false  and  using  such  a 
name  is  a  falsehood.  Persons  resorting  to  such  methods  are 
usually  presumed  to  do  so  for  a  purpose,  and,  if  unfair  compe- 
tition results,  they  will  be  restrained  from  so  doing.41 

the  plaintiff  company.  "  The  right  of  designed  or  calculated  to  mislead  the 

a  man  to  use  his  own  name  in  his  own  public  and  palm  off  the  business  as 

business  the  law  protects,  even  when  that   of  the   person   who   first  estab- 

such  use  is  injurious  to  another  who  lished  it  and  gave  it  its  reputation  " 

has  established   a    prior  business  of  (p.  468). 

the  same  kind,  and  gained  a  reputa-  "  Peck  Bros.  &  Co.  v.  Peck  Bros. 

tion  which  goes  with  the  name."    The  Co.,  113  Fed.  291-1902  (C.  C.  A.  7th 

courts  "permit  no  , artifice  or  deceit,  Cir.)  ;  51  C.  C.  A.  251;  62  L.  R.  A. 


222 


Unfair  Business  Competition. 


Taking  the  name  of  a  person  without  his  consent  for  use  in 
the  name  of  a  corporation,  or  using  one's  portrait,  or  facsimile 
of  one's  signature  on  a  trade-mark,  is  a  false  use.42 


81.  Elnathan  Peek  and  two  sons,  in 
3859,  began  business  as  E.  Peek  & 
Sons,  in  New  Britain,  Connecticut. 
In  1862,  same  business  was  incorpo- 
rated as  "  Peck  Bros.  &  Co."  Later 
the  house  became  embarrassed  and 
went  into  a  receiver's  hands  —  who 
sold  it  to  three  stockholders,  one  of 
whom  was  a  Peck.  While  the  receiv- 
ership was  pending,  a  charter  was 
taken  out  in  Illinois  for  a  corporation 
known  as  Peck  Bros.  Co.,  designed  to 
engage  in  same  business,  the  old  com- 
pany having  had  a  branch  office  in 
Chicago.  There  was  one  person  in 
the  new  company  named  Peck.  Held, 
"  Here  the  artifice  consisted  in  not 
using  one's  own  name  but  in  assum- 
ing falsely  the  name  '  Peck  Bros./ 
there  being  no  brothers  of  that  name 
in  the  incorporation.  The  name,  mani- 
festly, was  thus  assumed  for  the  pur- 
pose of  obtaining  the  good-will  of  the 
established  business  of  the  Connecti- 
cut corporation.  The  name  assumed 
was  itself  a  falsehood,  and  we  must 
believe  that  it  was  so  assumed  for  a 
purpose"  (p.  297).  *  *  * 
"  There  is  here  either  original  wrong- 
ful intent,  or,  if  the  design  were 
originally  honest,  it  became  wrongful 
upon  failure  to  acquire  by  purchase 
the  business  and  trade  name  of  the 
plaintiff." 

42  Kathreiner's  Malzkaffee  Fabrik 
v.  Pastor  Kneipp  Med.  Co.,  82  Fed. 
321-1897 ;  27  C.  C.  A.  351.  Sebastian 
Kneipp  was  a  Catholic  priest,  who 
had  interested  himself  in  the  subject 
of  health,  had  devised  a  system  of 
dietetics,  and  had  written  a  book  on 


the  subject.  He  had  obtained  con- 
siderable notoriety  prior  to  1891  in 
England  and  America.  He  depre- 
cated the  use  of  coffee  and  advocated 
a  substitute.  The  plaintiffs,  under  ■ 
his  approval  and  supervision,  pre- 
pared and  put  on  the  market  a  malt 
coffee  and  obtained  the  right  from 
him  to  use  his  name,  portrait,  or  sig- 
nature. The  word  "  Kneipp  "  and  his 
portrait  and  signature  were  registered 
in  the  United  States  and  other  coun- 
tries. In  1892,  defendants  incorpo- 
rated in  Illinois,  as  the  Pastor  Kneipp 
Medicine  Co.,  and  began  to  manufac- 
ture and  sell  malt  coffee,  labeled 
Kneipp  Coffee.  On  the  packages 
was  a  facsimile  of  the  portrait  of 
Kneipp.  Jenkins,  circuit  judge,  in 
the  circuit  court,  held,  "  Upon  the 
record,  we  are  constrained  to  believe 
that  the  Pastor  Kneipp  Medicine  Co., 
the  appellee,  was  conceived  in  sin 
and  brought  forth  in  iniquity,  that 
wrong  attended  at  its  birth,  and  that 
fraud  stood  sponsor  at  its  christen- 
ing, imposing  upon  the  corporate 
child  a  name  to  which  it  was  not  en- 
titled, and  which  it  had  no  right  to 
bear.  The  name  of  an  eminent  phi- 
lanthropist was  taken  without  his  con- 
sent and  against  his  protest.  This 
assumption  of  name  was  a  wrong 
which  we  cannot  doubt  a  court  of 
equity  would,  upon  his  application, 
have  restrained,  even  if  the  purpose 
of  the  corporation  had  been  wholly 
innocent  and  praiseworthy ;  but  here, 
it  is  clear,  the  name,  the  portrait,  and 
the  facsimile  signature  of  Rev.  Se- 
bastian Kneipp  were  employed,  not 


Corporate  Names. 


223 


In  Pollard  v.  Photographic  Co.42*  it  was  held  that  an  implied 
contract  exists  between  subject  and  artist  that  the  artist  will 
not  exhibit  the  picure.  This  rule  is  similar  to  the  contract  im- 
plied between  employer  and  employee  as  to  trade  secrets. 

The  fact  that  a  corporation  has  no  one  among  its  stock- 
holders or  incorporators  living  who  bears  the  family  name 
which  is  a  part  of  the  corporate  name,  is  no  ground  for  ques- 
tioning its  right  to  use  the  name  on  the  ground  that  it  is  a 
false  name.  In  Dodge  Stationery  Co.  v.  Dodge,43  Dodge  sold 
all  his  stock  in  plaintiff  company,  but  it  was  held  that  by  so 
doing  he  did  not  and  could  not  sell  any  part  of  plaintiff's  right 
to  use  his  name.  Nor  could  he  sell  to  still  another  corporation 
the  right  to  use  his  name. 

§  107.  Names  of  Unincorporated  Societies,  Clubs,  Etc. — 
Sometimes  serious  disputes  arise  as  to  the  right  of  some 
of  the  members  of  an  unincorporated  association  to  incorporate, 
using  the  name  of  the  common  association.  The  rule  in  New 
York  seems  to  be  that  where  two  factions  incorporate,  neither 
can  have  the  exclusive  right  to  the  common  name.44 


only  without  his  consent  and  against 
his  will,  but  were  so  assumed  with  a 
view  to  deceive  the  public,  and  to 
induce  the  belief  that  the  product 
marketed  and  sold  wei'e  prepared  un- 
der his  supervision,  and  offered  to  the 
public  with  his  sanction.  Under  such 
circumstances,  equity  will  not  hesitate 
to  extend  its  preventive  arm"  (p. 
325). 

"a40  Ch.  Div.  345-1888. 

43 145  Cal.  380-1904;  78  Pac.  879. 

"  Original  La  Tosca  Social  Club 
v.  La  Tosca  Social  Club,  23  App. 
D.  C.  96-1904.  For  about  six  years 
there  was  an  unincorporated  as- 
sociation known  as  the  "  La  Tosca 
Social  Club."  Some  of  the  members 
thoug'ht  that  the  club  should  be  incor- 
porated, and  three,  out  of  a  total  of 
twelve,  caused  it  to  be  incorporated, 
under  name  of  the  unincorporated  as- 
sociation.   Thereupon,  about  half  of 


the  members  withdrew,  and  about  ten 
months  later  incorporated  themselves 
as  the  "  Original  La  Tosca  Social 
Club/'  The  court  refused  to  restrain 
the  later  formed  corporation  from 
the  use  of  the  name,  adding  that  the 
corporation  first  formed  had  no  ex- 
clusive right  to  it.  "  It  is  only  in 
plain  cases  of  wrong  and  mischief 
that  the  court  will  be  disposed  to 
apply  the  strong  remedy  by  injunc- 
tion to  restrain  the  use  of  a  name. 
The  business  operation  of  a  corpora- 
tion or  party  should  not  be  restrained 
upon  mere  speculative  or  possible 
injury,  because  of  the  use  of  a  par- 
ticular name  claimed  by  another. 
*  *  *  There  is  no  right  to  the  in- 
junction, merely  from  the  form  of 
similarity  of  names;  there  must  be 
injury  shown  to  result  therefrom " 
(pp.  105-6).  Aiello  v.  Montecalfo, 
21  R.  I.  496-1899.    Held,  on  demur- 


224  Unfair  Business  Competition. 

§  108.  Similarity  of  Corporate  Names,  What  is. —  What 
names  are  "  calculated  to  deceive  "  and  what  names  are  so 
"  different,"  or  "  dissimilar,"  or  "  conflicting,"  as  not  to 
tend  to  cause  confusion  or  deceit?  What  standard  can  be  ap- 
plied to  measure  names,  to  discover  whether  or  not  they  are 
conflicting?  The  House  of  Lords  has  said  that  no  witness  is 
entitled  to  express  an  opinion  as  to  this.  The  names  may  be 
put  in  evidence,  together  with  the  facts  as  to  their  use,  and 
the  circumstances  surrounding  the  choosing  of  them ;  but  there 
is  no  standard,  except  what  the  court  in  each  particular  case 
believes  has  worked  fraud,  or  may  work  fraud  or  loss  to  the 
plaintiff.  The  probability  of  injury  resulting  from  the  use  of 
the  two  names  is  the  test  to  be  applied  by  the  court  for  the 
purpose  of  deciding  whether  or  not  the  name  will  conflict.  The 
"  Merchant  Banking  Company  "  was  established  in  1863.  In 
1878  the  "  Merchants'  Joint  Stock  Bank  "  was  started.  No 
one  had  been  misled.  The  two  banks  were  at  a  distance  from 
each  other,  although  both  in  London,  and  the  Chancery  Court 
refused  an  injunction,  being  ' '  satisfied  that  there  is  not  likely 
to  be  any  damage  or  injury  to  the  plaintiffs  at  all,  from  the 
act  of  the  defendants."45  In  most  cases,  however,  such  similar 
names  would  cause  confusion.  The  mere  fact  that  two  con- 
cerns happen  to  be  widely  separated  geographically  is  no  proof 
that  no  confusion  can  or  will  result  from  the  use  of  the  same 

rer,  that  a  good  cause  of  action  in  times    taken    into    consideration    by 

equity  was  set  up  by  a  bill  alleging  courts.     Plaintiff,  Merchant  Banking 

(hat   complainants  maintained   a  so-  Company  of  London,  was  established 

ciety  or  club  for  the  purpose,  in  part,  in  1863.     In  1878,  defendant  estab- 

of    giving    dramatic    entertainments,  lished    the    Merchants'    Joint    Stock 

that  they  had  from  time  to  time  given  Bank.     There  was  no  evidence   that 

such  entertainments,  and  had  adver-  anyone     had     been     misled     by    the 

tised  themselves  and  were  well  known  similarity  of  name.     The  two  banks 

as   a  club   in   the  city,  and  that  re-  were  located  a  considerable  distance 

spondents,  in  wrongfully  appropriat-  apart,   one   in   Bloomsbury,    London, 

ing    the    name     of    the    club,     had  the    other    in    Cannon    street.      The 

caused    and   would   cause   great   loss  court  refused  to  "  infer  "  an  intent  to 

and  damage  to  complainants.  imitate  and  said,  "  I  am  also  satis- 

45  Merchant   Banking    Co.   v.   Mer-  tied  that  there  is  not  likely  to  be  any 

chants'    Joint    Stock    Bank,    9    Ch.  damage  or  injury  to  the  plaintiffs  at 

Div.  560-1878.    Probability  of  injury  all  from  the  act  of  the  defendants  " 

resulting  from  similar  names  is  some-  (at  p.  569). 


Corporate  Names. 


225 


name  by  both.  In  Ball  v.  Best,™  Best  &  Co.  in  Chicago  was 
held  to  be  in  unfair  competition  with  Best  &  Co.  of  New  York ; 
and,  again,  two  concerns  may  be  but  a  short  distance  apart  and 
yet  be  fairly  competing,  as  for  instance:  the  "  Fulton  National 
Bank  of  New  York  "  and  the  "  Fulton  National  Bank  of 
Brooklyn."  Again,  names  of  corporations  may  be  similar  or 
exactly  the  same  and  the  companies  be  located  very  near  each 
other  without  creating  any  unfair  competition  if  the  names 
are  distinct  and  businesses  dissimilar.47 


*8 135  Fed.  434-1905  (C.  C.  111.). 

47  Farmers'  Loan  &  Trust  Co.  v. 
Farmers'  Loan  &  Trust  Co.  of  Kan- 
sas, 1  N.  Y.  Supp.  44-1S88;  21  Abb. 
N.  C.  104.  "It  is  evident,  on  the 
other  hand,  that  the  use  of  the  same 
name  would  not  be  enjoined  where 
the  parties  were  doing  a  business 
thereunder  entirely  dissimilar  and 
distinct ;  as,  for  instance,  where  one 
represented  a  banking  business  and 
another  a  locomotive  works.  Nor 
could  the  first  national  bank  estab- 
lished enjoin  every  other  bank  from 
using  the  name  '  First  National 
Bank;'  nor  could  the  Mechanics'  Na- 
tional Bank  of  New  York  enjoin  the 
Mechanics'  National  Bank  of  New 
Jersey;  nor  the  Fulton  Bank  of  New 
York,  the  Fulton  Bank  of  Brooklyn. 
And  yet,  if  a  bank  like  the  Chemical 

15 


Bank  of  New  York,  or  any  other 
bank,  had  acquired  in  the  particular 
city  a  valuable  interest  or  proprietary 
right  in  the  name,  the  court  would 
not  hesitate  to  enjoin  another  bank 
of  the  same  name  from  doing  busi- 
ness in  the  same  city,  to  its  detriment, 
and  the  confusion  of  the  public  "  (at 
p.  47).  National  Folding  Box  and 
Paper  Co.  v.  National  Folding  Box 
Co.,  43  Weekly  Reporter  156.  The 
plaintiffs  were  an  American  company 
and  in  business  in  America  and  also 
earned  on,  through  their  agents,  a 
large  business  in  England.  The  de- 
fendants interfered  with  this  business 
and  adopted  a  name  which,  in  all 
reasonable  probability,  the  court  held, 
would  lead  to  their  goods  being  passed 
off  as  goods  manufactured  by  the 
plaintiffs.     Injunction  issued. 


CHAPTER  IX. 

Geographic  or  Place  Names. 

Section  109.  Rule  of  priority. 

110.  One  of  several  who  use  a  common  geographic  name  may  sue 

on  behalf  of  all. 

111.  Association  of  the  name  and  the  locality  must  be  close. 

112.  Secondary  or  acquired  meaning. 

113.  Universal  knowledge  of  user  not  required. 

114.  Extent  of  district  to  which  a  name  applies. 

115.  Length  of  user  necessary  to  acquire  secondary  meaning. 

116.  Place  names  may  acquire  abstract  meaning. 

117.  Secondary  meaning  acquired  in  one  kind  of  business  is  not 

applicable  to  others. 

118.  Degree  of  resemblance  necessary. 

119.  Geographic    or    place  names  which  indicate  origin  and  source 

falsely. 

120.  Relative  location  of  plants  of  rivals  — effect  on  names. 

121.  Power  of  equity  to  limit  use  of  the  name  of  a  locality  to  those 

doing  business  in  that  locality. 

122.  Names  of  cities. 

123.  Effect  of  moving  a  plant  or  business. 

124.  Names  of  natural  products. 

125.  Geographic  names  which  indicate  a  process  of  manufacture. 

126.  Geographic  names  may  be  arbitrarily  adopted  as  trade  names. 

127.  Such  use  must  be  fair  and  truthful. 

128.  Geographic  names  which  indicate  quality. 

Geographic  or  place  names  are  of  four  sorts : 

(1)  Those  indicating  origin.  The  fact  that  a  cloth  is  manu- 
factured in  Connecticut  does  not,  per  se,  fix  upon  it  any  badge 
of  quality  whatever,  although  it  does  show  the  place  from 
which  it  comes. 

(2)  Those  indicating  a  particular  process  of  manufacture, 
viz. :  that  the  goods  bearing  the  name  come  from  a  locality 
where  such  goods  are  made  customarily  by  one  particular 
process  or  from  some  particular  material.  The  Kentucky 
court  has  held  that  "  Lexington  "  mustard  meant  mustard 
made  originally  in  the  factory  of  one  named  Brand,  by  his 
particular  process.     "  Worcester  "  china  has  come  to  mean 

[226] 


Geographic  or  Place  Names.  227 

china  made  in  Worcester,  England,  by  the  process  nsed  in  that 
place. 

(3)  A  name  used  arbitrarily  is  nsed  in  a  manner  in  no  way 
connected  with  the  place  the  name  of  which  is  nsed  on  the 
product,  as,  for  instance,  a  stove  made  and  sold  in  Newark, 
being  called  the  "  Portland,"  or  one  made  in  Baltimore,  being 
sold  as  the  Boston  Stove. 

(4)  Those  indicating  quality.  The  nature  of  the  soil,  or 
climate  of  a  locality  may  put  upon  certain  of  its  products  an 
indelible  stamp  of  good,  medium,  or  poor  quality.  "  Con- 
necticut "  tobacco  is  an  instance  of  this,  for  it  is  known  in  the 
tobacco  trade,  that  only  certain  qualities  of  tobacco  can  be 
grown  there. 

§  109.  Rule  of  Priority. — In  cases  involving  geographic 
and  family  names  which  become  trade  names  are  found 
the  strongest  reasons  for  refusing  to  interfere  with  the  un- 
limited use  of  a  name.  Both  parties  often  have  most  meri- 
torious claims  to  the  right  to  use  it  in  trade.  But  here,  as  in 
so  many  other  similar  situations,  the  law  has  found  the  rule 
of  priority  to  work  justice.  Says  Holmes,  J.,  in  The  American 
Waltham  Co.  v.  United  States  Watch  Co.,1  in  which 
the  question  was  as  to  the  use  of  the  word  "  Wal- 
tham:" "  Whatever  might  have  been  the  doubts  some  years 
ago,  we  think  that  now  it  is  pretty  well  settled  that  the  plaintiff, 
merely  on  the  strength  of  having  been  first  in  the  field,  may 
put  later  comers  to  the  trouble  of  taking  such  reasonable  pre- 
cautions as  are  commercially  practicable  to  prevent  their  law- 
ful names  and  advertisements  from  deceitfully  diverting  the 
plaintiff's  custom,"  *  *  *  "In  cases  of  this  sort,  as  in  so 
many  others,  what  ultimately  is  to  be  worked  out  is  a  point  or 
line  between  conflicting  claims,  each  of  which  has  meritorious 
grounds  and  would  be  extended  further  were  it  not  for  the 
other.  It  is  desirable  that  plaintiff  should  not  lose  custom 
by  reason  of  the  public  mistaking  another  manufacturer  for  it. 
It  is  desirable  that  the  defendant  should  be  free  to  manufacture 
watches  at  Waltham,  and  to  tell  the  world  that  it  does  so.  The 
two  desiderata  cannot  both  be  had  to  their  full  extent  and  we 
have  to  fix  the  boundaries  as  best  we  can  "  (id.  p.  86). 

*173  Mass.  85-87-1899;  53  N.  E.  141;  43  L.  R.  A.  826. 


228  Unfair  Business  Competition. 

Much  merit  can  be  found  in  the  claim  of  one  who  has  spent 
his  life  in  a  town  and  has  made  its  name  synonymous  with  the 
goods  he  has  manufactured  there,  or  with  his  business  located 
there.  Equal  merit  perhaps  is  found  in  the  claim  of  one,  of 
a  succeeding  generation,  who,  being  a  native  of  the  same  town, 
desires  to  set  up  there  in  the  same  business  and  to  use  freely 
the  name  of  his  native  town  as  a  part  of  his  trade  name. 
Equity  will  not  forbid  him  to  do  so,  but  it  will  regulate  care- 
fully his  use  of  the  name. 

§  110.  One  of  Several  Who  Use  a  Common  Geographic 
Name  May  Sue  on  Behalf  of  All. —  And  first,  as  to  who  may 
be  a  party  complainant,  who  has  a  right  to  demand  for  a  geo- 
graphic name  the  protection  of  equity.  The  question  arose  in 
the  Eosendale  Cement  case.2  Defendants  manufactured 
and  sold  "  Anchor  Eosendale  Cement  "  at  Lehigh  county, 
Pennsylvania,  from  stone  quarried  there. .  Complainants 
made  cement  at  Eosendale,  New  York,  where  there  are  fif- 
teen or  twenty  cement  rock  quarries,  some  of  which  have  been 
worked  for  fifty  years.  Conrplainants  began  to  work  theirs 
in  1874.  The  product  of  all  these  quarries  has  always  been 
known  as  Eosendale  cement.  Complainants  contended  that  the 
name  had  acquired  a  generic  significance.  Joseph  Bradley, 
Justice,  held:  "  No  doubt  the  sale  of  spurious  goods  or  hold- 
ing them  out  to  be  different  from  what  they  are  is  a  great  evil, 
and  an  immoral,  if  not  an  illegal,  act;  but  unless  there  is  an 
invasion  of  some  trade-mark,  or  trade  name,  or  peculiarity  of 
style,  in  which  some  person  has  a  right  of  property,  the  only 
persons  legally  entitled  to  judicial  redress  would  seem  to  be 
those  who  are  imposed  upon  by  such  pretenses  The  public,  of 
course,  is  deeply  interested  in  their  suppression,  and  if  the 
laws  are  deficient,  the  legislature  might  very  justly  intervene 
to  prevent  impositions  of  this  kind  by  public  prosecution  of 
the  offenders ;  but  to  give  a  civil  action  to  every  honest  dealer 
against  every  dishonest  one  engaged  in  the  same  trade  would 
vex  the  courts  and  the  country  with  an  excess  of  multitudinous 
litigation  In  our  view,  if  a  person  seeks  to  restrain  others 
from  using  a  particular  trade-mark,  trade  name,  or  style  of 

iNew    York   &   Rotsendale   Cement      277-1890    (C.   C.  A.);   10  L.   R.   A. 
Co.  v.  Coplay  Cement  Co.,  44  Fed.      833. 


Geographic  or  Place  Names.  229 

goods,  he  must  show  that  he  has  an  exclusive  ownership  or 
property  therein.  To  show  that  he  has  a  mere  right,  in  com- 
mon with  others,  is  insufficient  "  (id.  p.  279). 

An  injunction  was  refused  and  later  the  same  case  was 
moved  for  rehearing,3  and  Bradley,  J.,  affirmed  himself  and 
said :  i '  A  cigar  manufacturer  of  Havana  cigars  cannot  main- 
tain a  claim  of  trade-mark  in  '  Havana  Cigars. '  If  a  dealer  in 
New  York  sells  cigars  as  Havana  cigars  which  are  not  such,  it 
may  be  fraud,  but  it  is  no  violation  of  a  trade-mark  which  can 
be  claimed  by  all  the  cigar  makers  of  Havana.  So  all  cement 
manufacturers  of  Rosendale  and  its  vicinity  may  rightly  call 
their  manufactured  article  '  Rosendale  Cement, '  but  any  other 
person  may  go  to  Rosendale  and  manufacture  cement  there 
and  have  the  same  right.  There  is  no  exclusive  property  in 
the  name,  even  in  those  who  reside  there,  or  carry  on  the  manu- 
facture there.  It  is  open  to  all  the  world.  In  our  judgment 
there  is  not,  there  cannot  be,  any  trade-mark  in  the  name  of 
the  place"  (id.  p.  213). 

The  result  of  this  case,  then,  was  a  denial  of  the  right  of  a 
dealer  in  a  position  like  that  of  one  of  the  cement  makers  of 
Rosendale,  to  protect  the  name  which  all  of  them  used,  against 
dealers,  outside  of  Rosendale,  who  were  using  the  name.  It 
was  true  there  could  be  no  trade-mark  in  the  name,  but  the 
case  was  really  one  of  unfair  competition  not  one  of  trade- 
mark, and  if  buyers  of  cement  were  deceived  as  to  the  source 
or  origin  of  the  cement  which  the  defendants  sold,  the  injunc- 
tion should  have  been  granted. 

In  PUlsbury -Washburn  Flour  Mills  Co.  v.  Eagle*  a  bill  was 
brought  on  behalf  of  all  flour  dealers  making  Minneapolis 
flour  and  was  upheld,  and  various  other  cases  have  been  since 
decided,  which  have  laid  down  a  different  rule,  in  this  regard, 
from  that  of  the  Rosendale  case.  This  decision  of  Judge  Brad- 
ley was  criticised  by  Putnam,  J.,  in  1892,  in  City  of  Carlsbad 
v.  Tibbetts?  as  follows:  "  I  fear  that  the  rule  laid  down  by 
Justice  Bradley  may  be  held  to  be  the  law  in  the  United  States ; 
although  to  one  who  knows  the  history  of  the  manufacture  of 
Rosendale  cement  it  would  seem  just,  on  a  bill  filed  by  any 

'  45  Fed.  212-1891.  5  51  Fed.  852-56. 

4  86  Fed.  60S ;  41  L.  R.  A.  162. 


230  Unfair  Business  Competition. 

cement  manufacturer  in  that  locality  in  behalf  of  himself  and 
other  manufacturers,  to  protect  against  an  injury  to  the  honest 
dealer  coupled  with  a  fraud  on  the  public.  The  fact  that  many 
have  a  common  interest  in  the  same  subject-matter  ought  not 
to  deprive  one  of  the  many  from  being  protected  against  an 
injury  to  the  whole;  and  whatever  difficulties  there  might  be 
in  a  suit  at  law  for  damages  in  behalf  of  one  manufacturer 
among  many,  as  pointed  out  by  Justice  Bradley,  there  is  no 
more  inconvenience  in  proceeding  in  equity  in  such  cases,  than 
on  bills  in  behalf  of  parishioners  to  establish  a  general  modus, 
or  of  commoners  respecting  rights  of  common,  or  of  one  tax- 
payer in  behalf  of  all  others  in  the  town,  all  of  which  are  well 
recognized  subjects  of  equity  jurisdiction.  It  is  certain  that 
in  case  of  the  '  Stone  Ale  '  referred  to,  and  also  in  the  case  of 
the  '  Glenfield  Starch,'  reported  as  W  other  spoon  v.  Currie,9 
and  noted  in  Lawrence  Mfg.  Co.  v.  Tennessee  Mfg.  Co.,7  the 
use  of  the  name  of  the  town  was  protected  under  special  cir- 
cumstances." 

In  1899  several  California  corporations,  engaged  in  that 
state  in  canning  pears  grown  there,  and  known  to  the  trade  as 
"  California  Pears,"  sued  one  Myer,  who  canned  pears  grown 
in  Maryland  and  adjoining  states,  but  marked  them  as  Cali- 
fornia pears;  and  it  was  held  that,  while  no  one  person  could 
appropriate  the  words  "  California  Pears,"  all  those  who  put 
up  fruit  grown  in  California  were  entitled  to  use  these  words, 
and  they  would  be  protected  by  injunction  against  the  fraudu- 
lent use  of  labels  designating  as  California  pears  fruit  that 
was  grown  and  put  up  elsewhere.8 

It  would  seem  then  that  any  one  dealer  of  a  group,  all  of 
whom  use  a  particular  place  name,  should  have  standing  in 
equity  to  demand  protection  against  any  competitor  who  is 
using  the  name  which  is  in  use  by  him  and  his  neighbors,  to 
their  damage.  The  fact  that  others  share  the  right  to  use  the 
name  does  not  lessen  the  loss  he  suffers  or  give  any  better 
standing  to  the  rival  who  is  stealing  his  business  unfairly.  The 
true  test  is  found  in  the  question  as  to  whether  or  not  the  name 

6  L.  R.  5  H.  L.  Cas.  508-1872.  8  California   Fruit    Canners'   Assn. 

7 138  U.  S.  550-1891;  34  L.  ed.  v.  Myer,  104  Fed.  82  (Cir.  Ct.  Md. 
997;  11  Sup.  Ct.  396.  1899). 


Geographic  or  Place  Names. 


231 


used  has  become  so  associated  with  the  product  of  complainant 
and  his  neighbors  as  to  cause  fraud  when  used  by  anyone  else. 

§  111.  Association  of  the  Name  and  the  Locality  Must  be 
Close.  — The  association  between  the  goods  of  the  complain- 
ant and  the  place  name  in  question  must  be  clear.  One  may 
go  from  any  part  of  the  world  to  Rosendale  and  begin  to  make 
and  sell  Rosendale  cement  there,  free  from  interference  by  the 
courts;  but  he  may  not  make  cement  in  any  other  place  and 
sell  it  as  coming  from  Rosendale,  for  by  so  doing  he  will  con- 
fuse his  product  with  that  of  dealers  there.  His  product  may 
be  better  than  that  of  the  Rosendale  quarries,  but  that  does 
not  excuse  him.  He  may  not  dictate  to  buyers.  They  have  a 
right  to  be  dealt  with  fairly.  That  they  prefer  cement  from 
Rosendale,  though  it  cost  more  and  is  inferior  to  his  cement,  is 
not  any  concern  of  his.9 

§  112.  Secondary  or  Acquired  Meaning. —  "  The  name  of 
a  person  or  a  town  may  have  become  so  associated  with  a 
particular  product  that  the  mere  attaching  of  that  name  to  a 


8  Rugby  Portland  Cement  Co.,  Ltd. 
v.  Rugby  &  N.  P.  C.  Co.,  Ltd.,  9 
R.  P.  C.  46-48-1891.  Plaintiff 
had  for  some  time  manufactured 
Portland  cement,  which  it  called 
"Rugby  Portland  Cement."  De- 
fendant or  its  predecessor  had  also 
for  some  years  manufactured  Port- 
land cement,  with  which  it  had  oc- 
casionally filled  orders  for  "  Rugby 
Portland  Cement,"  although  it  did 
not  invoice  it  under  that  name.  Both 
companies  were  located  near  but  not 
in  Rugby.  The  plaintiff  was  denied 
an  injunction,  the  court  saying : 
"  The  plaintiffs  cannot  monopolize 
the  use  of  the  name  '  Rugby '  as 
applied  to  all  Portland  cement  made 
out  of  the  blue  lias  formation  which 
is  situated  in  the  neighborhood  of 
Rugby."  Glendon  Iron  Co.  v.  Uhler, 
75  Pa.  St.  467-1874.  Both  parties 
made   iron   in   borough   of   Glendon, 


incorporated.  Plaintiff  began  to 
make  use  of  word  "  Glendon "  in 
1844,  and  in  1871  defendants  began 
to  mark  their  iron  with  that  name 
and  "U.  F."  their  initials.  The 
Glenfield  starch  case  was  distin- 
guished in  that  Glenfield  was  an  es- 
tate where  about  sixty  people  lived, 
while  Glendon  was  a  borough  and 
"  the  name  which  an  individual  may 
give  to  his  estate  is  unlike  that 
which  legislative  sanction  has  given 
to  a  municipal  corporation.  The 
rights  of  the  public  in  each  are  radi- 
cally different"  (p.  470).  Plain- 
tiff's sole  right  to  use  of  word  was 
denied,  although  the  bill  alleged  that 
name  had  come  to  mean  in  iron  trade 
the  iron  of  the  plaintiffs,  which  was 
of  peculiar  grade,  and  the  referee 
found  the  principal  facts  as  set  out 
in  the  bill. 


232  Unfair  Business  Competition. 

similar  product  without  more  would  have  all  the  effect  of  a 
falsehood.10 

"  Geographical  names  often  acquire  a  secondary  significa- 
tion indicative  not  only  of  the  place  of  manufacture  or  pro- 
duction, but  of  the  name  of  the  manufacturer  or  producer  and 
the  excellence  of  the  tiling  manufactured  or  produced,  which 
enables  the  owner  to  assert  an  exclusive  right  to  such  name 
as  against  everyone  not  doing  business  within  the  same 
geographical  limits ;  and  even  as  against  them,  if  the  name  be 
used  fraudulently  for  the  purpose  of  misleading  buyers  as  to 
the  actual  origin  of  the  thing  produced,  or  of  palming  off  the 
productions  of  one  person  as  those  of  another."11  On  this 
subject  see  also  §§  69,  82-86,  110,  125. 

In  cases  of  this  sort  a  distinction  must  be  made  between 
names  which  are  local,  that  is,  which  are  associated  with  a 
certain  specific  locality,  and  those  which,  while  based  on  the 
name  of  a  place,  are  not  so  associated.  In  the  one  case  they 
serve  as  a  sort  of  directory  —  a  signboard  to  all  who  see  the 
name,  which  tells  them  where  the  concern  using  the  name  is 
located.  For  that  concern  to  move  and  take  the  name  along 
with  it,  would  serve  to  deceive  the  public. 

In  Armstrong  v.  Kleinhans,  a  building  was  named  by  the 
owner  "  Tower  Palace."  A  building  was  called  "  Tower 
Palace  "  and  the  store  in  it  "  The  Tewer  Palace  Carpet 
Store."  AVhen  a  tenant  who  had  occupied  the  store  moved 
and  attempted  afterward  to  use  the  name  "  Tower  Palace  "  it 
was  held  he  could  not  claim  the  name  because  it  was  the  name 
of  the  building.113 

10  Herring-Hall-Marvin  Safe  Co.  v.  enjoin  them  from  using  these  words  in 
Hall's  Safe  Co.,  208  U.  S.  554-59-  any  way.  From  1871  to  1877  plaintiff 
1908,  citing  Walter  Baker  &  Co.  v.  had  occupied  this  building.  When 
Slack,  130  Fed.  514-1904.  he  left  the  building  he  took  without 

11  French  Republic  v.  Saratoga  consent  of  the  owner  the  sign  from 
Vichy  Co.,  191  U.  S.  427-35-1903;  its  place  and  put  it  upon  the 
48  L.  ed.  247;  24  Sup.  Ct.  145.  house  to  which  he  remove'd.     When 

1Ia  82  Ky.  303-1S84 ;  56  Am.  Rep.  the  owner  took  possession  he  put  a 
894.  Plaintiff  sought  to  remove  from  new  sign  reading  "  Tower  Palace  " 
a  storehouse,  No.  150  West  Market  where  the  other  had  been  and  called 
street,  occupied  by  the  defendant,  a  his  store  while  he  occupied  the  build- 
sign  reading  "  Tower  Palace "  and  to  ing     "  The     Tower     Palace     Carpet 


Geographic  or  Place  Names. 


233 


§  113.  Universal  Knowledge  of  User  not  Required.  —  Un- 
fair competition  does  not  deal  "with  place  names  which  are 
used  in  their  usual  signification,  but  with  those  in  which  some- 
one has  acquired  a  special  right  or  property, —  when,  in  other 
words,  they  are  used  in  an  unusual  sense.  Such  rights  are  ac- 
quired by  user  —  by  association. 

The  knowledge  of  such  user  need  not  be  universal;  it  is 
enough  that  it  exists  among  such  persons  as  knew,  at  the 
time  the  action  is  brought,  of  the  existence  of  complainants' 
business  or  goods.12  "  Universality  of  recognition,  there- 
fore, is  not  required.  What  is  required  is  that  a  substan- 
tial section  of  the  purchasing  public  should  be  proved  to 
identify  the  trade  name  with  the  plaintiff's  goods,  and  that 
this  should  be  true  of  the  district  in  which  the  defendant's  trade 
is  done."  13 

The  fact  that  plaintiff's  sales  have  been  small  is  not  a  de- 
fense to  the  action.14  If,  however,  the  plaintiff's  goods  are  ab- 
solutely unknown  in  the  defendant's  territory,  there  could  be 
no  passing  off.  But  if  the  plaintiff's  goods  are  even  slightly 
known  there  —  that  is  to  such  extent  as  not  to  be  negligible  — 
then  the  plaintiff  should  be  protected.15 

§  114.  Extent  of  District  to  Which  a  Name  Applies.— 
The  question  often  arises  as  to  the  extent  of  a  district  in  which 


Store."  That  sign  was  on  the  build- 
ing when  the  defendant  took  posses- 
sion. The  court  held  that  the  build- 
ing was  named  by  the  owner.  The 
plaintiff  advertised  his  business  ex- 
tensively. There  was  evidence  to 
show  that  since  his  removal  he  had 
lost  business  because  of  the  Market 
street  house  being  still  called  "  Tower 
Palace."  Held,  that  the  name  de- 
scribed the  place  —  the  building  — 
not  the  business,  or  the  person 
carrying  it  on,  and  was  never  used 
as  a  trade-mark  by  the  plaintiff. 
Ball  v.  Broadway  Bazaar,  App.  Div. 
(2d  Dept.)  N.  Y.  Law  Jour.,  Oct. 
29,  1907.  Plaintiff  was  a  dealer  in 
children's    clothes    on     Twenty-third 


street  (Manhattan),  New  York,  under 
the  trade  name  "  Best  &  Co.,  Lilipu- 
tian  Bazaar."  Defendant  was  en- 
gaged in  the  same  business  on  Broad- 
way in  Brooklyn  under  the  trade 
name  "  Broadway  Bazaar  —  Brook- 
lyn's Best  Liliputian  Store."  Held, 
that  the  use  of  this  trade  name  by 
the  defendant  involved  no  infringe- 
ment of  the  plaintiff's  rights,  the  lo- 
cality being  different.  No  deception 
shown. 

11  Faulder  v.  Rushton,  20  R.  P.  C. 
477,  1902. 

18  Cutler,  Passing  Off,  p.  48. 

11  Cutler,  Passing  Off,  p.  52. 

10  Braham  v.  Beachim,  7  Ch.  Div. 
848-1878. 


234 


Unfair  Business  Competition. 


the  right  to  a  certain  name  may  be  claimed.  Does  it  apply  to  a 
township  or  merely  to  a  parish  or  village  or  to  an  entire 
countryside?  Local  conditions  necessarily  govern  these  cases. 
In  Braham  v.  Beacliim,16  it  was  held  that  "  Radstock  Colliery  " 
might  mean  a  colliery  within  a  district  called  by  the  name  Rad- 
stock or  a  colliery  within  Radstock  parish  proper;  and  further, 
that  the  parish  had  not  given  its  name  to  all  the  collieries  on 
the  coal  vein  in  that  neighborhood.  A  name  often  has  many 
meanings.  New  York  is  the  name  of  a  state,  a  county,  and  a 
city.  All  the  facts  of  each  particular  use  must  be  studied,  to 
discover  the  meaning  of  the  names  as  used  in  the  case  under 
consideration.  Is  that  use  an  honest  one,  an  accurate  one,  is  it 
used,  not  to  imitate  but  to  separate,  to  differentiate? 

What  is  the  understanding  of  the  average  man  —  the  gen- 
eral public  —  as  to  the  meaning  of  the  name?  This  question  is 
far  more  important,  in  the  eyes  of  the  court,  than  the  fixing  of 


"Braham  v.  Beachim,  7  Ch.  Div. . 
848-1878.  Plaintiff  owned  all  col- 
lieries in  parish  of  Radstock.  The 
same  seam  of  coal  was  worked  out- 
side the  parish  by  others.  Before 
1848  predecessors  of  the  plaintiffs 
used  name  "  Radstock  Coal  Co."  and 
later  "Radstock  Coal  Works."  De- 
fendants in  1868  began  as  "  Rad- 
stock Wagon  Co.,"  using  name 
"  Radstock  Coal  Co."  Confusion  re- 
sulted and  plaintiff  adopted  "  The 
Rt.  Hon.  the  Countess  Waldegrave's 
Radstock  Collieries."  Defendants 
then  used  name  "  The  Radstock  Col- 
liery Proprietors."  Then  they  put  up 
the  sign  "  The  Radstock  Colliery 
Proprietors  Coal  &  Coke  Office,"  and 
later  still  "  The  Radstock  Coal  Com- 
pany, Colliery  Proprietors,  Coal  & 
Coke  Office."  Fry,  J.  held,  when 
plaintiff  changed  name  from  Rad- 
stock Coal  Co.  and  'Radstock  Coal 
Works  defendants  were  bound  as 
honorable  men  not  to  follow  suit. 
Plaintiff,  as  sole  owner  of  collieries 


in  Radstock  parish,  is  presumably 
alone  entitled  to  call  herself  "  Rad- 
stock Coal  Proprietor."  "  The  fact 
that  a  vein  of  Radstock  coal  runs  out 
of  parish  of  Radstock  does  not  en- 
title all  workers  of  it  to  describe 
themselves  as  Radstock  Colliery  Pro- 
prietors. The  genus  includes  the 
species  and  by  using  name  of  Rad- 
stock coal  proprietors  defendants 
represented  themselves  as  selling 
coals  of  plaintiff  and  others  which 
comes  under  description  Radstock 
coal.  There  is  great  distinction  be- 
tween Radstock  Colliery  (which  may 
mean  a  colliery  within  the  district) 
and  a  colliery  at  Radstock,  because 
that  means  a  colliery  within  the 
parish  of  Radstock  and  I  do  not 
believe  that  the  parish  has  given  its 
name  to  all  the  collieries  in  the  Rad- 
stock series"  (p.  856).  Defend- 
ants enjoined  from  use  of  Radstock 
Colliery  Proprietors  until  they  ac- 
quire a  colliery  in  parish  of  Rad- 
stock. 


Geographic  or  Place  Names.  235 

boundaries.  The  meaning  of  a  geographic  name  and  the 
extent  of  the  section  to  which  it  applies,  may  be  said  to  be 
qualified  by  the  section  from  which  orders  or  customers  may  be 
expected  to  come.  In  some  instances  this  might  mean  a  large 
part  of  the  civilized  world,  in  others  a  few  blocks  in  a  city. 
What  is  a  merchant's  market?  His  protection  should  be  coex- 
tensive with  that.    See  §  85. 

§  115.  Length  of  User  Necessary  to  Acquire  Secondary 
Meaning. —  It  takes  time  to  acquire  a  secondary  meaning. 
In  the  Yorkshire  Relish  case  the  time  was  twenty-five  years,  in 
the  Silverpan  Jam  case,  about  fourteen  years,  in  the  Anatolia 
Licorice  case,  six  weeks.  From  these  instances  it  will  be  seen 
that  there  is  no  rule  as  to  the  length  of  time  required.  It  must 
be  governed  by  the  conditions  in  each  case,  depending  on  the 
locality,  the  nature  of  the  business,  and  the  kind  of  goods  in- 
volved. 

§  116.  Place  Names  May  Acquire  Abstract  Meaning. — 
There  is  a  difference  between  a  place  name  used  on  goods  de- 
noting that  they  come  from  a  specific  place  and  one  which 
originally  had  such  a  meaning  but  has  come,  by  usage,  to  be  a 
term  generally  applied  to  all  goods  having  the  properties  and 
characteristics  which  the  natural  product  has.  In  such  case,  a 
place  name  does  not  acquire  a  special  meaning  applied  to 
goods  of  one  person  alone  but  becomes  a  general  abstract  term, 
an  abstract  noun  of  the  language.  The  name  Epsom  Salts  is 
an  instance  of  this.17 

17  City  of  Carlsbad  v.  Kutnow,  71  the  name  of  Carlsbad,  as  in  the  case 

Fed.  167-1895;  35  U.  S.  App.  750;  with  the  Epsom  Salts,  a  term  now 

18  C.  C.  A.  24.     Lacombe,  J.,  said:  generally    applied    to    sulphate    of 

"  The     Carlsbad    Sprudel     Salts    in  magnesia,  whether  such  sulphate  of 

either  form,   therefore,  is   a  natural  magnesia  comes  from  Epsom  or  not. 

product,    and   well   known    as   such;  Under  these  circumstances  the  com- 

and   there   is   no   proof  in   the   case  plainant,   the   City  of   Carlsbad,  has 

that  the  complainants  have  used  the  the   right   to   indicate   the   origin   of 

name     '  Carlsbad '     upon     any     but  these  natural  salts  by  its  own  name, 

genuine     Carlsbad     Sprudel     Salts.  and  would  be  entitled  to  the  aid  of 

And    we    concur     with    the    circuit  a  court  of  equity  to  prevent  anyone 

judge  in  the  finding  that  there  is  no  from  using  that  name  to  induce  the 

evidence    in    the    record     that     any  public    to    accept    as    genuine    arti- 

artificial   salts  have,   from  similarity  ficial    salts   not   the    product   of   the 

or  otherwise,  come  to  be  known  by  Carlsbad  springs"  (at  p.  757). 


236  Unfair  Business  Competition. 

§  117.  Secondary  Meaning  Acquired  in  One  Kind  of  Busi- 
ness is  not  Applicable  to  Others. —  Property  in  a  place  name 
for  all  purposes  cannot  exist  in  one  person,  under  ordinary  cir- 
cumstances. The  defendant  must  be  using  it  in  the  same  or  a 
similar  business  as  the  plaintiff.  Large  amounts  of  rubber  as 
well  as  licorice  might  be  found  in  Anatolia.  If  there  were,  the 
rights  which  the  complainant  has  acquired  in  the  use  of  the 
name  in  the  licorice  business  would  not  prevent  another  under 
certain  conditions  from  acquiring  a  sole  right  to  use  the  name 
in  the  rubber  trade.18 

§  118.  Degree  of  Resemblance  Necessary. —  The  resem- 
blance necessary  to  constitute  unfair  competition  in  these  cases 
of  geographical  names  is  the  same  as  with  other  names.  There 
must  be  ambiguity.  There  must  be  such  confusion  as  will 
bring  some  loss  or  injury  to  those  who  have  already  built  up  a 
business  of  their  own.  The  primary  right  of  all  to  use  the 
geographical  names  must  be  considered  in  connection  with  the 
other  right  which  each  man  has  to  be  free  from  fraudulent 
competition.  A  further  discussion  of  the  question  of  similarity 
and  secondary  meaning  is  found  in  the  chapter  on  Names  of 
Goods,  Business  Names,  and  Similarity. 

§  119.  Geographical  or  Place  Names  Which  Indicate 
Origin  and  Source  Falsely. —  The  importance  to  the  busi- 

18  Mc  Andrew  v.  Bassett,  4  De  G.  Word  "Anatolia"  by  the  defendants 
J.  &  S.  380-1864.  The  plaintiffs  on  licorice.  In  response  to  the  argu- 
were  large  manufacturers  of  licorice.  ment  that  the  word  "Anatolia  "  was 
They  styled  this  licorice  "Anatolia,"  common  to  all,  the  court  said :  "  *  *  * 
which  was  the  name  applied  to  a  Property  in  the  word  for  all  pur- 
whole  tract  of  country  wherein  poses  cannot  exist,  but  property  in 
licorice  root  is  largely  grown.  At  that  word,  as  applied  by  way  of 
the  time  plaintiffs  began  to  use  the  stamp  upon  a  particular  vendible 
word  there  was  no  other  manufac-  article  as  a  stick  of  licorice,  does 
turer  of  licorice  stamping  it  with  the  exist  the  moment  the  article  goes 
word.  Subsequently,  in  response  to  into  the  market  so  stamped,  and 
an  order  for  Anatolia  licorice,  de-  there  obtains  acceptance  and  reputa- 
fendants  caused  a  stamp  to  be  pre-  tion,  whereby  the  stamp  gets  cur- 
pared  containing  the  word  "  Ana-  rency  as  an  indication  of  superior 
tolia  "  and  put  it  on  the  goods  and  quality,  or  of  some  other  circum- 
afterward  continued  to  use  it.  The  stance,  which  renders  the  article  so 
court  below  granted  a  perpetual  in-  stamped  acceptable  to  the  public " 
junction  restraining  the  use  of  the  (p.  386). 


Geographic  or  Place  Names.  237 

ness  world  of  place  names  not  being  lying  brands  but  truth- 
ful statements  of  where  goods  are  made,  or  produced,  is  recog- 
nized by  equity.  If  anyone  who  wishes  may  use  a  name, 
whether  technical  trade-mark  or  not,  untruthfully,  or  if  he  may 
use  a  name  which  gives  false  information  as  to  his  goods,  the 
result  is  fraud  on  the  public,  loss  of  business  by  the  plaintiff, 
and  a  loss  of  incentive  to  dealers  to  create  individual  reputa- 
tions for  themselves  and  their  goods.  Reputations  cannot  exist 
apart  from  names.  It  is  important  then,  that  names  indicating 
source  or  origin  of  goods  should  be  most  accurately  used  and 
should,  when  truthful,  be  given  full  protection.  One  cannot 
make  "  Minneapolis  "  flour  in  "Wisconsin,  where  there  is  a 
brand  of  well-known  "  Minneapolis  Flour  "  made  in  Minne- 
apolis. One  is  quite  free  to  go  to  that  city,  and  make  flour 
there,  and  it  may  be  that  his  product  may  properly  be  called 
"  Minneapolis  "  flour;  but  to  use  that  name  on  flour  made  in 
any  other  place  is  to  use  it  in  fraud  of  the  rights  of  manufac- 
turers in  Minneapolis ;  is  to  use  it  so  as  to  make  of  it  a  lying 
brand,  a  name  giving  false  information ;  is  to  misrepresent  the 
source  or  origin  of  the  goods.19  If  one  person  be  allowed  to 
use  such  a  lying  brand,  all  may,  and  the  good-will  of  various 
concerns,  built  up  by  years  of  work,  will  be  injured  and  per- 
haps rendered  valueless.  If  the  private  interests  involved  in 
this  question  are  great,  the  public  interests  are  greater,  for 
the  public  has  a  right  to  honest  brands  and  honest  goods. 

18  Pillsbury-Washburn  Flour  Mills  '  Minneapolis,  Minnesota.'  The  de- 
Co.,  Ltd.  v.  Eagle,  86  Fed.  608-  fendant  might  have  continued  to  buy 
1898;  30  C.  C.  A.  386;  41  L.  R.  A.  Minneapolis  flour,  and  branded  it 
162,  reversing  82  Fed.  816-1897.  '  Minneapolis,  Minnesota/  and  had 
"  The  complainants  can  have  no  ex-  all  the  benefit  which  these  marks 
elusive  right  to  the  use  of  the  would  give  him  in  the  market,  be- 
geographical  names  of  '  Minneapo-  cause  he  would  be  adhering  to  truth 
lis '  or  '  Minnesota.'  They  are  not  and  fair  dealing.  But  when  he 
the  subject  of  a  trade-mark  proper.  placed  these  same  brands  upon  an- 
Any  one  or  more  of  the  two  hun-  other  flour,  manufactured  in  Wis- 
dred  thousand  inhabitants  of  Min-  consin,  he  departed  from  the  truth, 
neapolis  may  use  that  word  upon  and  placed  a  lying  brand  upon  his 
their  flour.  The  defendant  or  any  goods,  which  was  intended  to  de- 
other  person  from  any  state  may  go  ceive,  and  could  not  but  deceive,  the 
there  and  establish  a  mill  and  brand  public  and  result  in  injury  to  the 
his    flour    'Minnesota    Patent'    and  complainants'  business." 


238  Unfair  Business  Competition. 

Both  in  England  and  America,  the  distinction  has  been  made 
between  cases  where  a  geographical  name  has  been  adopted 
and  claimed  as  a  trade-mark  proper  and  those  where  it  has 
been  adopted  first  as  merely  indicating  the  place  of  manu- 
facture, and  afterward,  in  course  of  time,  has  become  a  well- 
known  sign  and  synonym  for  excellence.  This  distinction  is 
unimportant.  Persons  doing  business  at  places  other  than  that 
bearing  the  name  they  use  on  their  goods  will  not  be  permitted 
to  use  this  geographical  name  as  a  brand  or  label  for  goods, 
merely  for  the  purpose  of  fraud  and  false  representation  and 
to  appropriate  the  good-will  and  business  which  by  long-con- 
tinued industry  and  skill  and  a  generous  use  of  capital  another 
has  rightfully  built  up.  It  will  be  of  no  avail  in  such  cases, 
where  the  facts  are  admitted  or  proven,  to  allege  a  want  of 
power  in  equity  to  give  relief.  The  court  has  long  exercised 
similar  powers. 

To  sell  artesian  well-water  as  "  Blue  Lick  Water,"  which  the 
public  would  understand  from  the  name  to  mean  water  from  a 
spring  well  known  to  many,  is  fraud.  If  a  purchaser  calls  for 
Carlsbad  salts  he  has  a  right  to  be  sure  the  article  comes  from 
Carlsbad  and  not  New  York.  To  use  that  name  upon  artificial 
salts  made  in  New  York  is  to  deceive  the  purchaser  as  to  the 
origin  of  the  goods,  the  place  from  which  they  came,  and  to 
state  an  untruth.  He  may  be  injured,  and  the  trader  rightfully 
using  the  name  dealing  in  the  same  sort  of  goods  may  be  de- 
frauded of  profits  which  are  the  result  of  his  work  in  building 
up  his  business  under  the  name,  now  wrongfully  used  by  his 
competitor.20 

"  City  of  Carlsbad  v.  Kutnow,  68  ficial  salts  have  come  to  be  known  by 

Fed.    794-1895,    affirmed,    35    TJ.    S.  the  name  of  "  Carlsbad  Salts,"  from 

App.  750-1895,  71  Fed.  167.   The  City  similarity  or  otherwise,   the  defend- 

of  Carlsbad  as  proprietor  of  the  Carls-  ants  have  the  same  right  to  sell  such 

bad  Springs,  had  for  years  evaporated  salts  by  that  name  that  they  have  to 

the  waters  into  salts,  which  were  sold  sell  anything  by  the  name  by  which 

as    "  Carlsbad    Sprudel    Salz."      De-  it  is  known.     If  the  defendants  pro- 

fendants,  who  were  New  York  drug-  cured    genuine    Carlsbad    waters    or 

gists,   made   a    similar    salt,    without  salts,  and  put  them  up  in  different 

the    use    of    the    genuine    Carlsbad  forms,  or  with  other  ingredients,  to 

water,   and   sold   it   under  the   name  improve  their  taste  or  vary  their  ef- 

"  Improved     Effervescent      Carlsbad  fects,    these    words    used    would    be 

Powder."     Held,   that   if   any   arti-  truthful,    and    they   would    seem   to 


Geographic  or  Place  Names. 


239 


§  120.  Relative  Location  of  Plants  of  Rivals  —  Effect  on 
Names. —  The  fact  that  the  place  where  the  defendant  makes 
his  goods  or  where  he  procures  raw  material  is  near  to  the 
spot  from  the  name  of  which  his  rival's  goods  is  obtained, 


have  a  clear  right  to  use  them  in 
such  preparations;  but  the  plaintiffs' 
proof  tends  to  show  that  the  defend- 
ants' salts  are  not,  in  substance, 
genuine  Carlsbad  salts,  in  any  form. 
No  proof  has  been  brought  showing 
that  the  plaintiffs  have  used  the 
name  of  "  Carlsbad  "  upon  any  but 
genuine  Carlsbad  Sprudel  Salts,  and 
the  defendants  use  the  name  "  Carls- 
bad "  upon  artificial  salts  having  no 
connection  with  that  name  because 
of  its  connection  with  the  genuine 
Carlsbad  Sprudel  Salts.  Carlsbad, 
with  its  springs,  is  far  away.  This 
use  of  its  name  in  connection  with  a 
preparation  so  similar  to  this  well- 
known  product  of  them  is  some  rep- 
resentation that  it  is  a  genuine  prod- 
uct of  them.  Calling  the  powder 
"  Improved  Carlsbad "  is  a  direct 
representation  that  genuine  Carlsbad 
powder  has  been  taken  to  be  im- 
proved upon;  and  calling  it  also 
"  effervescent "  is  a  representation 
that  the  improvement  is  in  the 
effervescence.  This  is  putting  the 
plaintiffs'  mark  to  some  extent  upon 
the  defendants'  salts,  and  is  calcu- 
lated to  lead  customers  to  think  they 
are  the  salts  of  the  plaintiffs.  Such 
deception  would  be  actionable  at 
law,  and  is  preventable  in  equity. 
Improved  Fig  Syrup  Co.  v.  Cali- 
fornia Fig  Syrup  Co.,  4  C.  C.  A. 
264-1893;  54  Fed.  175;  Von  Mumm 
v.  Frash,  56  Fed.  830-1893.  Parkland 
Hills  Blue  Lick  Water  Co.  v.  Haw- 
kins, 95  Ky.  502-1894;  26  S.  W.  389. 
Plaintiff  marketed  "  Blue  Lick  Wa- 
ter "    since    1S88.      Defendant    later 


began  to  sell  "  Parkland  Hills  Blue 
Lick  Water,"  words  Blue  Lick  being 
very  prominent  on  their  label.  Their 
water  came  from  an  artesian  well  at 
Lexington.  Blue  Lick  spring  used 
by  plaintiff  had  been  famous  for 
more  than  one  hundred  years. 
"  Name  Blue  Lick  indicated  origin 
and  ownership  or  place  of  the  prod- 
uct- and  is  one  in  the  exclusive  use 
of  which  the  appellees  should  be  pro- 
tected. The  proof  discloses  a 
scheme  by  which,  when  a  thirsty  pa- 
tron *  *  *  called  for  Blue  Lick  wa- 
ter, *  *  *  he  was  to  be  given  water 
from  the  artesian  well  of  the  appel- 
lant. This  was  no  less  a  fraud  on 
the  public  than  on  the  appellee." 
Compania  General  de  Tabacos  v. 
Eehder,  5  R.  P.  C.  61-1887  (Ch. 
Div.).  Plaintiffs  succeeded  to  the 
business  of  the  Spanish  govern- 
ment in  the  manufacture  of  cigars, 
and  continued  to  use  the  same  labels 
and  marks,  including  the  word 
"  Cavite,"  the  name  of  a  district  in 
which  the  cigars  were  manufactured. 
Defendants  were  using  for  their 
cigars  labels  closely  resembling 
plaintiff's  and  were  likewise  using  the 
name  Cavite.  It  was  not  proved 
that  their  goods  were  manufactured 
in  the  district  of  Cavite.  Interlocu- 
tory injunction  granted.  Wheeler  v. 
Johnson,  3  L.  R.  Ir.  284-1879. 
Use  of  words  Cromac  Springs  for 
name  of  waters  from  a  spring  at  a 
locality  called  Cromac  will  be  pro- 
tected if  defendant  uses  the  name  so 
as  to  pass  off  the  waters  he  sells  as 
those  of  the  plaintiff. 


240 


Unfair  Business  Competition. 


is  no  justification  for  his  using  that  name  to  the  injury  of 
another.  That  clay  is  taken  out  of  the  same  seam  or  vein, 
although  in  a  place  distant  from  the  spot  where  a  rival  is 
located,  and  that  this  clay  is  of  the  same  quality  constitutes 
no  justification.21 


21  Dunnachie  v.  Young,  10  Scot. 
Sess.  Cas.  (4th  ser.)  874-1883.  Dun- 
nachie was  on  Glenboig;  the  clay  the 
plaintiff  used  was  found  and  manu- 
factured there;  and  in  putting  the 
name  of  the  place  into  this  trade- 
mark he  was  only  following  the 
course  ordinarily  pursued.  The  re- 
spondents were  not  on  Glenboig. 
"  In  taking  that  word,  they  took  it 
only  because  it  denoted  goods  known 
in  the  market  to  be  of  high  quality, 
and,  if  they  are  to  find  virtue  in  it, 
this  will  only  be  because  those  who 
at  first  or  second-hand  are  the  pur- 
chasers of  their  goods  read  the  word 
as  indicated  that  the  goods  are  the 
product  of  a  manufactory  other  than 
Heathfield.  The  respondents  try  to 
justify  their  assumption  of  Glen- 
boig, first,  on  the  ground  that  their 
clay  is  of  the  same  seam;  and  sec- 
ond, that  the  word  '  Glenboig '  as 
used  by  them  is  qualified  by  the 
word  '  Young's '  and  so  misappre- 
hension not  to  say  deception  is  pre- 
vented. The  fact  assumed  is  the 
former  of  these  grounds,  and  has,  I 
think,  been  established,  but  it  is  in- 
sufficient as  a  justification.  The 
least  that  can  be  said  on  the  sub- 
ject is  that  the  word,  as  used,  is 
ambiguous.  That,  in  my  opinion, 
would  be  enough.  Why  should  the 
respondents  use  a  word  that  may 
mislead  people  to  buy  their  goods  as 
the  goods  of  the  complainants'?  If 
all  the  respondents  desired  to  sug- 
gest is  that  their  bricks  are  made  of 
the  clay  of  the  Glenboig  seam  raised 
on    Heathfield,     a    word     or    words 


could  be  introduced  by  which  this 
could  be  communicated"  (p.  886). 
Seixo  v.  Provezende,  1  Ch.  App. 
192-1865.  Since  1848  plaintiff 
had  marked  his  wine  "  Seixo,"  with 
his  coronet  stamped  over  it.  In 
1862  defendant  put  on  the  market 
"Seixo  de  Cima "  (upper  Seixo). 
Seixo  means  stony  or  pebbly,  like 
Steinwein  in  German.  Defendant's 
vineyards  were  on  Sitio  de  Seixo 
(district  of  Seixo).  Plaintiff  owned 
Quinta  de  Seixo  (Seixo  Estate). 
"Assuming  the  truth  of  what  is  con- 
tended for  by  the  defendants,  i.  e., 
that  pails  of  their  vineyards  are 
known  by  the  name  Seixo,  that  does 
not  justify  them  in  adopting  a  de- 
vice or  brand  the  probable  effect  of 
which  is  to  lead  the  public  when 
purchasing  their  wine  to  suppose 
that  they  are  purchasing  wine  pro- 
duced from  the  vineyards  not  of  the 
defendants,  but  of  the  plaintiff"  (at 
p.  198).  Distinguishing  Leather 
Cloth  Co.  v.  American  Leather  Co., 
11  Jur.  N.  S.  513-1865.  Bewlay  & 
Co.,  Ltd.  v.  Hughes,  15  R.  P. 
C.  290-1898.  Plaintiffs  had  for 
some  time  been  selling  cigars  named 
from  a  district  in  India  "  Flor  de 
Dindigul."  Defendant  afterward  be- 
gan selling  cigars  under  the  brand 
"  Cigarro  de  Dindigul,"  claiming  the 
right  to  do  so  on  the  ground  that 
the  tobacco  came  from  Dindigul  in 
India.  He  was  enjoined  from  using 
the  name  "  Cigarro  de  Dindigul,"  or 
from  using  the  name  "  Dindigul  "  at 
all  without  clearly  distinguishing  his 
cigars  from  plaintiffs'. 


Geographic  or  Place  Names. 


241 


§  121.  Power  of  Equity  to  Limit  Use  of  the  Name  of  a 
Locality  to  those  Doing-  Business  in  that  Locality. — A  person 
using  a  place  name,  in  which  he  has  acquired  rights,  and  which 
indicates  the  origin  of  his  goods,  may  compel  others  who  would 
use  the  same  name  to  do  business  in  the  district  the  name 
designates,  or  stop  using  it.  If  a  place  name  indicates  quality, 
it  would  seem  unfair  for  him  who  uses  it  to  move  to  another 
place  and  continue  to  use  the  name,  if  by  moving  his  plant 
any  change  was  made  in  the  quality  of  his  product  by  reason 
of  the  fact  that  natural  resources,  which  existed  at  the  first 
place,  became  unavailable  to  him.  For  instance  the  quality  of 
wine,  or  of  clay  products  or  tobacco  may  largely  depend  on 
the  place  of  manufacture  or  cultivation.22    See  §  123. 

§  122.  Names  of  Cities. — Anyone  has  the  right  to  use  the 
name  of  a  city  as  the  name  of  his  goods,  as  a  general  principle. 


"A.  F.  Pike  Mfg.  Co.  v.  Cleve- 
land Stone  Co.,  35  Fed.  896-98- 
1888.  The  names  "Green  Moun- 
tain," "Willoughby  Lake,"  "La- 
moille," and  others  as  designating 
scythe  stone,  had  been  used  by  com- 
plainant and  its  predecessors  for  a 
number  of  years.  Defendants  ac- 
quired a  quarry  adjacent  to  com- 
plainant's, and  branded  theirs  in  the 
same  way.  It  was  urged,  first,  that 
the  brands  employed  by  defendants 
did  not  infringe.  Defendants  used 
the  exact  words  "  Lamoille,"  "  Green 
Mountain  "  and  others,  but  in  place 
of  "  Willoughby  Lake,"  employed 
the  title  "Willoughby  Ridge."  It 
was  urged  that  "  Lamoille "  and 
"  Willoughby  Lake  "  were  geograph- 
ical terms.  The  defendants  quarried 
stones  200  miles  from  Lamoille 
county  and  Willoughby  Lake,  and 
applied  to  this  stone  the  names  "  La- 
moille "  and  "Willoughby  Ridge." 
Assuming  that  complainants  cannot 
have  a  valid  trade-mark  in  these 
names,  it  seems  settled  that  a  manu- 
facturer wiD  be  protected  in  the  use 

16       ' 


of  a  geographical  name  as  against 
one  who  does  not  carry  on  business 
in  the  district  so  designated.  Black- 
well  v.  Dibrell,  3  Hughes  160,  Fed. 
Cas.  No.  1,475-1878;  Newman  v.  Al- 
vord,  49  Barb.  588-1867 ;  affirmed  in 
51  N.  Y.  189-1872.  Blackwell  &  Co. 
v.  Dibrell  &  Co.,  3  Hughes  (U.  S.) 
151-178;  Fed.  Cas.  1,475  (C.  C.  Va.). 
Complainants  were  successors  to  one 
who,  taking  up  a  small  tobacco  busi- 
ness at  a  little  place  called  Durham, 
adopted  the  word  "  Durham  "  with 
the  figure  of  a  bull  as  a  trade-mark, 
and  developed  a  very  large  business. 
The  neighborhood  of  Durham  came 
to  be  known  for  the  quality  of  the 
smoking  tobacco  there  grown;  and 
the  place  grew  and  became  well 
known,  owing  largely  to  the  develop- 
ment of  the  business  of  the  com- 
plainants' predecessors.  Held,  that 
complainants  were  entitled  to  the  ex- 
clusive use  of  the  word  and  figure, 
particularly  as  against  competitors 
manufacturing  elsewhere  than  at 
Durham. 


242 


Unfair  Business  Competition. 


but  not  the  right  to  do  so  to  the  injury  of  another  trader  or 
manufacturer  using  the  name  rightfully.  St.  Louis  has  become 
known  for  the  quality  of  white  lead  made  there.  For  a  Chicago 
manufacturer  of  lead  to  call  his  product  St.  Louis  lead,  to  the 
injury  of  St.  Louis  dealers,  is  unfair.23    This  injury  may  be  in 


*  Southern  White  Lead  Co.  v. 
Cary,  25  Fed.  125-1885.  Complain- 
ant, a  manufacturer  of  white  lead  in 
St.  Louis,  stamped  upon  its  kegs  the 
words,  "  Southern  Company,  St. 
Louis,  Warranted  Strictly  Pure 
White  Lead  in  Pure  Linseed  Oil." 
St.  Louis  had  an  established  repu- 
tation for  pure  white  lead,  and  com- 
plainant had  maintained  for  years 
a  large  trade  at  that  place  as  manu- 
facturer. Defendants  manufactured 
their  lead  at  Chicago,  branding  it 
"  Southwestern  St.  Louis."  Sur- 
rounding the  words  "  Strictly  Pure 
White  Lead,"  the  words  "  South- 
western St.  Louis  "  appearing  in  the 
same  form  as  the  words  "  Southern 
Company,  St.  Louis,"  and  a  label  on  it 
stating  it  was  strictly  pure.  Analysis 
showed  complainant's  lead  to  be  pure 
and  defendant's  to  be  adulterated. 
Held,  Gresham,  C.  J.,  that  "  the  de- 
fendants so  branded  the  heads  of 
their  kegs  as  to  naturally  mislead 
and  induce  persons  purchasing  for 
consumption  to  suppose  they  are 
purchasing  complainant's  lead,  when 
they  are  getting  an  inferior  article. 
The  brand  used  by  the  defendants 
is  so  like  the  complainant's  as  to  in- 
duce the  public  to  mistake  the  one 
for  the  other.  The  defendants  sell 
their  goods  to  retail  dealers,  and  it 
may  be  that  such  dealers  are  not  de- 
ceived, but  they  sell  to  consumers 
who  are  or  may  be  deceived.  The 
complainant  is  entitled  to  relief,  if 
the  brand  used  by  the  defendants 
sufficiently    resembles   the   complain- 


ant's brand  to  be  mistaken  for  it, 
and  the  defendants  adopted  their 
brand  for  the  purpose  of  selling 
their  kegs  as  the  kegs  of  complain- 
ant, or  for  the  purpose  of  enabling 
retail  dealers  to  do  so,  and  the  com- 
plainant has  been  injured  by  this 
fraud,  or  is  likely  to  be  injured  by 
it.  The  complainant  manufactures 
its  genuine  white  lead  at  St.  Louis, 
and  its  reputation  is  already  estab- 
lished as  a  manufacturer  and  dealer 
of  this  character.  The  defendants 
manufacture  their  adulterated  and 
greatly  inferior  lead  at  Chicago,  and 
stamp  upon  their  kegs  a  false  brand 
in  imitation  of  the  complainant's 
brand.  Why  is  this  done  unless  it 
be  in  the  hope  of  deceiving  the  pub- 
lic and  injuring  the  complainant? 
Realizing  that  they  could  not  engage 
in  open  manly  competition  with  the 
complainant,  the  defendants  resort  to 
a  palpable  trick.  If  this  resulted  in 
no  injury  to  the  complainant,  or  was 
likely  to  result  in  no  injury  to  it, 
the  bill  would  have  to  be  dismissed. 
But  the  affidavits  show  that  the  de- 
fendants' kegs  can  and  have  been 
sold  as  the  complainant's"  (id. 
p.  126).  Huntley  &  Palmer  v.  Read- 
ing Biscuit  Co.,  Ltd.,  10  R.  P. 
C.  277-1893.  Plaintiffs  had  long 
made  at  Reading  biscuits  very  widely 
known  as  "  Reading  biscuits."  In 
many  cases  the  tins  were  so  marked 
and  the  words  were  used  in  cata- 
logues. Plaintiffs  were  substantially 
the  only  biscuit  manufacturers  in 
Reading.        Defendant      corporation 


Geographic  or  Place  Names.  243 

loss  of  trade  in  the  city,  the  name  of  which  is  a  part  of  the  trade 
name ;  or  it  may  be  in  loss  of  trade  in  some  distant  place,  where 
the  goods  find  a  market  under  that  name.  The  right  of  all  citi- 
zens of  a  city  to  use  its  name  in  christening  their  goods  will 
not  excuse  their  using  it  so  as  to  injure  their  rivals  by  deceit, 
fraud,  or  trickery.  An  illustration  of  such  a  use  of  a  city  name 
is  found  in  the  "  St.  Louis  Beer  "  cases.  This  beer  was  sold  in 
South  America  and  Panama,  as  well  as  in  the  United  States. 
In  Anheuser-Busch  Breiving  Association  v.  Piza,2i  com- 
plainant did  business  at  St.  Louis,  Mo.,  and  had  been  accus- 
tomed to  export  beer  in  bottles  with  a  label  bearing  the  words 
"St.  Louis  Lager  Beer"  to  South  America  and  Panama. 
Neither  defendant  nor  any  other  person  in  the  export  trade 
had  been  accustomed  to  use  the  words  "  St.  Louis  Lager  Beer.'* 
Defendant  shipped  beer  from  New  York  in  competition  with 
complainant.  It  was  shown  that  at  Panama  and  in  South 
America  "  St.  Louis  Lager  Beer  "  was  in  demand.  Defend- 
ant's beer  was  made  in  New  York  and  his  bottles  were  so 
labeled  as  to  represent  that  the  beer  was  made  at  St.  Louis,  and 
that  his  firm  were  the  sole  agents  for  the  St.  Louis  lager  beer. 
He  insisted  that  buyers  did  not  discriminate  between  com- 
plainant's article  and  other  beer  made  in  the  United  States, 
but  bought  it  simply  because  they  supposed  St.  Louis  beer  was 
produced  in  the  United  States,  as  distinguished  from  German 
and  English  beer,  but  the  court  said :  "  This  may  be  true ;  but, 
if  it  is,  it  does  not  seem  to  be  conclusive  against  the  right  of 
the  complainant  to  the  injunction  which  he  seeks.    As  the  goods 

was    formed    by    the    owners    of    an  pend  on  how  it  is  done,  or  the  names, 

existing  bakery  business,  established  which  the  defendants  in  eases  of  this 

at  Reading,  to  manufacture  biscuits  kind  endeavor  to  set  up.     The  court 

under  the  name  of  The  Reading  Bis-  has    to    look    at    the    substance    and 

cuit  Company,  but  had  not  yet  com-  when    the   court   finds   that    in    sub- 

menced  business.    Injunction  granted  stance,     notwithstanding     there     ar& 

against  the  use  of  the  word  "  Read-  many    things    which    the    defendant 

ing "  in  connection  with  biscuits  not  could    do   which   are   legitimate   and 

manufactured     by     plaintiff,     unless  within  his  right,  yet  he  is  so  contriv- 

clearly  distinguished  from  plaintiff's  ing  them  as  to  take  away  something 

goods.       Chitty,    J.,    says :       ■"  It    is  which  belongs  to  another  man,  it  is. 

necessary  to  look  carefully  into  cases  the  duty  of  the  court  to  interfere  '* 

like  the  present,  because  it  does  not  (at  p.  280). 

depend  on  the  form;  jt  does  not  de-  2i  24  Fed.  149-50-51-1885. 


244  Unfair  Business  Competition. 

of  the  parties  go  to  the  same  markets  it  can  hardly  fail  to 
happen  that  the  complainant  will  lose  sales,  and  the  defendant 
will  get  customers,  in  consequence  of  defendant's  acts.  Al- 
though the  defendant  cannot  have  an  exclusive  property  in  the 
words  '  St.  Louis  '  as  a  trade-mark,  or  an  exclusive  right  to 
designate  its  beer  by  the  name  '  St.  Louis  Lager  Beer,'  yet, 
as  its  beer  had  always  been  made  at  that  city,  its  use  of  the 
designation  upon  its  labels  is  entirely  legitimate;  and  if  the 
defendant  is  diverting  complainant's  trade  by  any  practices  de- 
signed to  mislead  its  customers  where  these  acts  consist  in 
simulating  its  labels,  or  representing  in  any  other  way  his 
products  as  those  of  the  complainant,  the  latter  is  entitled  to 
protection.  It  is  no  answer  for  the  defendant,  when  the  com- 
plainant asks  for  protection,  to  say  that  it  has  no  exclusive 
right  to  designate  its  product  in  the  manner  it  has,  although 
this  might  be  very  properly  asserted  by  a  competitor  selling 
beer  made  at  St.  Louis,  or  who,  by  reason  of  any  circumstances, 
might  be  entitled  to  represent  his  product  as  originating  there.25 
*  *  *  It  is  sufficient  that  it  was  lawful  for  the  complain- 
ant to  use  that  name  (St.  Louis)  to  designate  its  property;  that 
by  doing  so  it  has  acquired  a  trade  which  is  valuable  to  it,  and 
that  the  defendant's  acts  are  fraudulent,  and  create  a  dishonest 
competition,  detrimental  to  the  complainant." 

§  123.  Effect  of  Moving  a  Plant  or  Business. —  The  right  to 
use  a  geographic  name  indicating  source  is  not  lost  because  the 
one  using  it  moves  his  plant  to  another  place.  This  is  not  a 
reason  why  he  may  not  continue  to  claim  protection  in  the  use 
of  the  name  of  the  place  where  he  was  formerly  located,  if  it 
has,  prior  to  the  time  of  his  removal,  acquired  a  secondary 
meaning,  as  used  by  him,  which  will  cause  fraud  and  deceit  of 
purchasers,  if  used  by  another,  even  though  that  other  is  mak- 
ing the  goods  at  the  place  whence  the  first  mentioned  maker 
bad  removed. 

For  instance  one  G.  in  1891  acquired  the  plant,  stock,  good- 
will and  all  rights  in  a  well-established  business  of  manufac- 
turing plows,  long  carried  on  at  a  village  called  Deer  Eiver, 
the  plows  being  branded  with  the  words  "  Deer  Eiver  "  and 
widely  known  as  ''Deer  Eiver  "  plows.     Plaintiff  then  re- 

M  Canal    Co.  v.    Clark,    80    U.    S.   311-1871;   20  L.  ed.  581. 


Geographic  or  Place  Names.  245 

moved  the  factory  to  Lowville  in  the  same  county,  continuing 
the  old  name  and  brand  "  Deer  River."  Two  or  three  years 
later  defendant,  a  former  employee,  bought  the  old  factory 
building,  representing  that  he  was  to  use  it  as  a  blacksmith 
shop  and  general  repair  shop.  He  began,  however,  to  make 
plows  there  in  imitation  of  plaintiff's  and  branded  them  as 
"  Deer  Eiver  "  plows  and  placed  his  own  name  upon  them 
and  his  salesmen  represented  the  plows  to  be  identical  with 
that  made  by  the  plaintiff  and  his  predecessors.  It  was  held, 
that  the  plaintiff  was  entitled  to  preliminary  injunction  re- 
straining defendant  from  the  use  of  the  name  ' '  Deer  Elver  ' ' 
on  his  plows.26 

In  Siegert  v.  Gandolfi  it  is  stated  that  "  if  the  geographical 
name  has  become  a  secondary  designation  indicative  of  the- 
product  of  the  particular  manufacturer,  it  is  as  much  entitled 
to  protection  as  any  arbitrary  or  fancy  name  *  *  *  an(j  the 
circumstance  that  the  manufacturer  may  have  removed  his 
place  of  business,  and  his  making  the  product  in  some  other 
place  is  of  no  more  consequence  than  it  would  be  if  he  had 
adopted  the  fancy  name. ' ' 27 

§  124.  Names  of  Natural  Products. —  The  same  rules  that 
apply  to  names  of  manufactured  articles  apply  to  the  names 
of  natural  products  which  have  been  rendered  valuable  by  the, 
owner's  brains  and  labor,  such  as  names  of  natural  springs. 
The  Wisconsin  court,  on  the  petition  of  the  owners  of  the 
"  Bethesda  Mineral  Spring  "  enjoined  the  use  of  the  name 
"  Glenn  Bethesda  Mineral  Water  "  where  the  owners  of  i}ie 
latter  made  misleading  representations  as  to  the  ownership 

28  Gebbie  v.  Stitt,  82  Hun   (N.  Y.)  Trinidad.      Defendants  made  bitters 

93-1894;     31     N.     Y.     Supp.     102  of  a  similar  kind  at  Baltimore  and 

(Gen'l  Term,  4th  Dep't).  sold    them    as    "Angostura    Bitters," 

17  Siegert  v.  Gandolfi,  149  Fed.  imitating  at  the  same  time  complain- 
100-1906  (C.  C.  A.  2nd  Cir.).  Com-  ants'  bottles  and  labels,  but  correctly 
plainants  were  the  successors  of  the  stating  in  the  labels  and  circulars 
original  manufacturer  of  Siegert's  their  own  name  and  the  place  of 
"Angostura  Bitters,"  with  which  the  manufacture.  Held,  that  the  word 
name  "Angostura  "  had  long  been  "Angostura  "  had  acquired  a  second- 
identified;  this  name  was  that  of  a  ary  meaning  and  was  not  open  to 
city  in  Venezuela  where  the  bitters  the  use  of  defendants,  and  these 
were  first  made,  though  the  factory  rights  were  not  lost  by  the  removal, 
had  lone:   since   been   transferred   to 


246 


Unfair  Business  Competition. 


of  the  spring  of  the  plaintiffs,  the  defendant's  spring  being 
1200  feet  away  from  theirs,  although  the  two  waters  were 
identical  in  their  character.  The  decision  was  based  on  the 
court's  belief  that  "  the  rules  laid  down  in  respect  to  an  arti- 
ficial or  manufactured  article  are  said  to  apply  to  the  pro- 
prietorship  of  any  peculiar  natural  product  which  a  party 
may  have  acquired  with  the  avails  of  his  industry,  sagacity,  and 
enterprise;  the  owner  or  vendor  of  the  one,  equally  with  the 
owner  or  vendor  of  the  other,  having  a  right  to  the  exclusive 
use  of  his  mark  employed  in  connection  with  sale  of  the  com- 
modity. ' ' 28 

In  Canada,  in  a  case  where  there  was  no  misrepresentation, 
a  case  of  this  sort  was  distinguished  from  the  Stone  Ale  case, 
because  the  water  was  not  a  manufactured  product,  but  a  prod- 
uct of  the  soil,  and  the  name  used  applied  to  a  locality  in 
which  both  springs  were  located  and  the  defendant  was 
entitled  to  indicate  in  his  name  the  source  of  his  natural  prod- 
uct.29   But  in  an  American  case,30  the  use  of  the  name  "  Clys- 


38  Dunbar  v.  Glenn,  42  Wis.  118- 
35-1877.  For  seven  years  plaintiffs 
owned  a  mineral  spring  in  village  of 
Waukesha,  generally  called  the 
"  Bethesda  Mineral  Spring,"  and 
sold  its  waters  widely  over  the  coun- 
try. Defendants  began  to  sell 
"  Glenn-Bethesda  Mineral  Water " 
and  published  circulars  giving  mis- 
leading facts  as  to  ownership  of  the 
Bethesda  Spring.  Defendants  claimed 
to  own  spring  1,200  feet  from  plain- 
tiffs' spring  with  water  identical 
with  that  of  plaintiffs'  spring  in  all 
respects.  Held,  it  is  the  rule  that 
the  owner  of  a  trade-mark  has 
a  right  to  protection  in  the  sole  use 
of  it.  Citing  Coats  V.  Holbrook, 
Neteon  &  Co.,  2  Sandf.  Ch.  (N.  Y.) 
586-1845;  Congress  and  Empire 
■Spring  Co.  v.  High  Bock  Congress 
Spring  Co.,  45  N.  Y.  291-1871. 

™  Grand  Hotel  Co.  v.  Wilson,  21 
H.     P.      C.     117-1903.       Plaintiffs 


owned  springs  in  township  of  Cale- 
donia, Ontario,  which  spring  water 
they  sold  as  "  Caledonia  Water,"  etc. 
One  defendant  bored  on  land  belong- 
ing to  another  of  the  defendants, 
adjoining  land  of  plaintiffs,  and  got 
water  similar  to  plaintiffs'  and  began 
to  sell  it  as  "  Natural  Saline  Water 
from  the  New  Springs  at  Caledonia." 
Held  by  the  Privy  Council  that  there 
had  been  no  imitation  of  get-up  or 
marks,  and  defendant  was  entitled  to 
indicate  the  local  source  of  the 
waters  sold  by  him  and  had  ade- 
quately distinguished  their  product 
from  that  of  plaintiffs.  Court  made 
the  point  that  waters  were  not  manu- 
factured goods  (hence  the  Stone  Ale 
case  did  not  apply),  that  the  wafers 
got  their  properties  from  the  soil  of 
that  locality.  It  was  shown  also, 
that  the  word  "  Caledonia  "  applied 
not  only  to  plaintiffs'  spring,  but 
to  a  spring  two  miles  away,  called 


Geographic  or  Place  Names. 


247 


mic  "  for  a  spring  was  enjoined  where  the  name  was  not  one 
which  had  ever  been  used  in  the  locality  where  the  springs 
were,  except  by  the  plaintiffs.  In  other  words,  if  the  name  is 
given  to  a  spring  by  one  person,  another  may  not  nse  it  al- 
though the  latter 's  water  comes  from  the  same  locality  but  is 
not  put  on  the  market  until  after  the  name  had  been  applied  to 
the  place  by  the  plaintiff. 

§  125.  Geographic  Names  Which  Indicate  a  Process  of 
Manufacture. —  Again,  geographical  names  may  indicate 
that  the  goods  so  named  are  made  by  a  particular  process,  or 
in  a  manner  peculiar  to  a  particular  place.  A.  has  long  made 
a  certain  product  at  X.  in  a  manner  peculiarly  his  own,  which 
is  not  patented.  That  fact  is  one  widely  known,  and  it  comes 
about  that  any  of  that  product  bearing  the  name  X.  will  be 
taken  to  have  been  made  by  him.  "  Stone  Ale  "  which  was 
made  in  the  town  of  Stone  in  England,  and  "  Worcester 
China  ' '  which  has  for  years  been  made  at  Worcester,  England, 
by  a  few  firms  in  a  particular  way,  are  illustrations  of  such 
names.  For  a  stranger  to  make  ale  or  china  under  these  names 
in  these  places  or  elsewhere  could  not  but  create  confusion. 


the  D  Spring.  The  court  admitted 
defendants'  water  was  likely  to  be 
more  profitable  because  of  situation 
of  springs  of  defendant  and  that  the 
defendant  was  entitled  to  any  profit 
that  might  come  from  that  fact  in  this 
instance,  but  held  that  defendants 
were  not  proved  to  have  sold  water 
as  "  Caledonia  Water  "  and  that  the 
use  of  words  "  New  Springs  "  by  de- 
fendants distinguished  their  goods 
from  plaintiffs'. 

30  Hill  v.  Lockwood,  32  Fed.  389- 
1887  (C.  C.  E.  D.  Wis.).  Plaintiff 
purchased  a  spring  of  mineral  water, 
known  as  the  "  Clysmic  Spring." 
Defendant  was  then  selling  agent  for 
a  certain  territory;  he  had  advertised 
and  developed  the  spring,  and  given 
it  its  name.  Plaintiff,  then,  by  con- 
tract, gave  defendant  the  exclusive 
right   to   sell   the   water  for   twenty 


years.  By  defendant's  efforts,  the 
water  became  widely  known  as 
"  Clysmic  Water."  Afterward,  the 
contract  being  still  in  force,  defend- 
ant, purchased  land  adjoining  plain- 
tiff's and  opened  a  spring  there,  the 
water  of  which  he  sold  as  "  Clys- 
mic Water."  The  name  "  Clysmic  " 
had  never  been  used  in  the  locality 
except  with  reference  to  plaintiff's 
spring,  and,  that  defendant  had  no 
right  to  sell  other  waters  under  the 
same  name,  in  competition  with 
those  of  plaintiff's  spring.  Manhat- 
tan Medicine  Co.  v.  Woods,  108  U.  S. 
218;  Alaska  Packers'  Assn.  v.  Alaska 
Imp.  Co.,  GO  Fed.  103 ;  Sherwood  v. 
Andrews,  5  Am.  L.  R.  N.  S.  588; 
Hegeman  v.  liegeman,  8  Daly 
(N.  Y.)  1;  Symonds  v.  Ioica  Soap 
Co.,  104  Fed.  51,8;  Stachelberg  v. 
Ponce,  23  Fed.  430;  Hazard  v.  Cas- 


248  Unfair  Business  Competition. 

There  is  a  distinction  between  a  geographic  name 
which  has  become  synonymous  with  the  plaintiff's  name 
by  association  and  a  name  which  has  become  synony- 
mous with  some  process  in  the  abstract.  The  distinc- 
tion is  necessary  because  a  name  merely  synonymous  with 
the  plaintiff's  goods  may  be  protected  by  equity  for  the  sole 
benefit  of  the  plaintiff;  but  one  which  has  become  the  name 
of  a  process  has  become  an  abstract  word  which  all  may  use. 
This  distinction  is  shown  in  the  case  of  Anheuser-Busch  Brew- 
ing Assn.  v.  Fred  Miller  Brewing  Co.31  Complainants'  pre- 
decessor had  long  sold  a  beer  of  special  quality,  known  as 
"  Budweiser  "  beer,  because  originally  made  of  imported 
materials  similar  to  those  used  in  a  brewery  at  Budweis,  in 
Bohemia,  and  by  the  same  process  there  employed.  Defend- 
ant subsequently  put  on  the  market  a  brand  of  beer  described 
as  "  Budweiser."  There  was  no  simulation  in  labels  or  dress. 
Held,  that  while  there  could  be  no  exclusive  right  in  the  geo- 
graphical name  "  Budweiser,"  as  a  trade-mark,  and  while  de- 
fendant might  be  entitled  to  use  the  name  if  it  truly  denoted 
the  process  by  which  it  was  brewed,  yet,  under  the  evidence, 
it  appeared  that  the  name  had  been  arbitrarily  adopted  by  de- 
fendant, being  in  no  way  descriptive  of  the  process,  and  that 
it  had  been  adopted  for  the  purpose  of  taking  advantage  of  the 
reputation  of  complainants'  beer  and  that  its  use  therefore 
constituted  unfair  competition. 

Similarly,  the  name  of  the  town  of  Worcester,  England, 
referred  to  above,  has  become  associated  with  the  china  in- 
dustry. It  has  been  held  that  the  owner  of  the  china  fac- 
tories there  had  the  right  to  enjoin  a  rival  from  using  the 
name  for  china  which  he  manufactured  in  or  near  Worcester. 
The  name  had  been  used  as  a  name  of  the  product  of  three 
mills  for  115  years.  That  fact  gives  to  the  owners  of  these 
mills  the  right  to  say  that  Worcester  china  means  only  china 
made  by  them.  On  the  other  hand,  Worcestershire  sauce  means 

well,  93  N.  Y.  259;  Dixon  Crucible  (Pa.)  42;  Frazier  v.  Doxding,  18  Ivy. 

Co.  v.  Guggenheim,  2  Brewst.   (Pa.)  L.  R.  1109. 

321;   Jennings  v.  Johnson,  37   Fed.  Sl  87  Fed.  SG4,  Circ.  Ct.  E.  D.  Wis. 

364;  Feder  v.  Benkert,  70  Fed.  613;  1S9S. 

Fulton   v.    Seller    &    Co.,   4  Brewst. 


Geographic  or  Place  Names. 


M9 


sauce  made  by  a  particular  process  not  associated  with  one 
person  only,  but  with  a  place,  and  indicates  that  the  sauce 
bearing  the  name  is  the  kind  originally  made  in  Worcester- 
shire by  some  one,  the  identity  of  the  maker  having  been  lost, 
or  at  any  rate  disregarded.32 

It  is  the  right  of  any  person  to  discover  any  facts  he  can, 
lawfully,  as  to  a  secret  process  and  to  use  it  to  make  goods  by 
that  process  in  competition  with  the  owner.  But  if  the  com- 
petitor approximates  the  goods  of  the  owner  of  the  secret, 
which  are  made  by  secret  process,  and  then  calls  his  goods  by 
the  same  name,  the  public  is  likely  to  believe  that  the  imitation 
goods  are  the  same  as  the  original  goods.     In  Birmingham 


eiLea  v.  Dealin,  Fed.  Cas.  8,154- 
1879.  Plaintiffs  had  long  made 
Worcestershire  sauce  in  "Worcester- 
shire, England.  Defendant  lived  in 
Wisconsin  and  got  from  England 
"  Improved  Worcestershire  Sauce " 
made  in  London  and  put  it  on  the 
market.  Held,  Worcestershire  sauce 
had  been  long  known  in  market  and 
is  now  a  generic  name,  applied  to 
that  species  of  sauce.  It  cannot  be 
claimed  by  the  plaintiffs  simply  be- 
cause they  live  in  Worcestershire 
and  they  cannot  have  sole  right  to 
use  of  that  term  for  that  species  of 
sauce.  Worcester  Royal  Porcelain 
Co.  v.  Locke  &  Co.,  19  R.  P.  C.  479- 
1902.  In  1751,  Worcester  Porcelain 
was  first  made  in  Worcester,  Eng- 
land. From  1786  to  1801  there  were 
two  china  makers  near  Worcester 
making  Worcester  ware.  From  1S01 
to  1S40  there  were  three  china 
makers  near  Worcester  making  Wor- 
cester ware.  From  1840  to  18S9 
there  were  two  china  makers  near 
Worcester  making  Worcester  ware. 
These  houses  were  independent  and 
enjoyed  a  large  reputation.  The 
name  "  Worcester  "  applied  to  china 
has  a  secondary  meaning  relating  to 


china  and  has  had  such  meaning  for 
more  than  100  years,  aside  from  its 
geographical  sense,  so  the  court  here 
held,  and  never  has  represented  the 
china  of  more  than  three  con- 
temporaneous firms,  all  of  which  are 
now  united  in  the  plaintiff  by  suc- 
cession or  otherwise.  The  plaintiff 
claimed  that  Locke  left  their  employ 
and,  in  1896,  began  to  make  "  Wor- 
cester China "  which  his  advertise- 
ments stated  was  "  Manufactured 
by  E.  Locke  &  Co.,  Shrub  Hill 
Works,  Worcester,"  and  that  he  made 
other  goods  marked  only  with 
word  "  Worcester."  Held,  injunction 
should  issue  restraining  from  using 
name  "  Worcester  "  on  china  "  with- 
out clearly  distinguishing  such  goods 
from  the  goods  of  the  plaintiffs " 
(p.  490).  This  ruling  was  made  de- 
spite the  fact  that  no  actual  decep- 
tion was  proven.  Held,  also,  that 
the  plaintiffs  were  not  disentitled  to 
relief  because  other  firms  had 
made  "  Worcester  "  china  in  the  past 
at  Worcester  or  because  they  had  de- 
scribed some  of  their  goods  as 
"  Royal  Worcester "  and  others  as 
"  Graingers  Worcester  China." 


250 


Unfair  Business  Competition. 


Vinegar  Brewery  Co.  v.  Powell™  ''Yorkshire  Relish"  had 
been  made  by  plaintiffs  from  a  secret  receipt,  during  many 
years.  Defendants  did  not  discover  it  but  approximated  it, 
and  put  out  their  product  under  the  same  name,  in  a  similar 
bottle  with  a  similar  label.  Proof  existed  of  actual  deception  of 
purchasers.  It  was  held  that,  as  plaintiffs  had  used  the  name 
for  thirty  years,  and  it  was  the  name  of  a  particular  sauce,  if 
anyone  sold  "  Yorkshire  Relish  "  he  thereby  alleged  that  he 
sold  the  particular  sauce  of  the  plaintiffs.  That  was  passing 
off  goods  as  the  goods  of  another,  for,  since  the  recipe  for 
plaintiffs'  sauce  had  not  been  discovered,  the  two  sauces  could 
not  be  the  same.  The  defendants  thus  were  using  a  name 
to  misrepresent  their  goods  to  be  made  by  the  same  process  as 
that  used  by  the  plaintiffs,  which  was  untrue. 

Whitstable  oysters  was  found  by  the  English  court  to  mean 
a  peculiar  class  of  oysters  fattened  by  the  process  used 
near  Whitstable,  and  that  all  oysters  of  this  name  had  an  ap- 
pearance peculiar  to  themselves.  It  was  decided  that,  unless 
the  term  meant  that  all  Whitstable  oysters  came  from  the 
plaintiff's  beds  at  that  place,  no  injunction  could  issue.  But 
as  it  meant  oysters  of  a  certain  kind,  the  defendant  might 
use  it  on  oysters  answering  these  requirements.34 


33App.  Cas.  1897-710,  66  L.  J. 
(Ch.)  N.  S.  763-1897,  House  of 
Lords. 

Bi  Whitstable  Oyster  Fishing  Co.  v. 
Haijling  Fisheries,  18  R.  P.  C. 
434-1901.  Plaintiff  was  incorporated 
by  George  III  and  was  sole  owner  of 
the  marine  manor  and  royalty  of 
Whitstable  &  Oyster  Fishery  thereon, 
and  claimed  especial  qualities  for 
their  oysters.  Defendants  began  to 
offer  for  sale  oysters  not  plaintiff's,  as 
"  Whitstables  &c.  Imperials  "  which 
latter  was  a  name  used  by  plaintiff 
to  designate  oysters  imported  by 
plaintiff  and  fattened  at  Whitstable. 
Plaintiff  had  permitted  persons 
purchasing  oysters  from  them  to  sell 
them  as  Whitstable  oysters  with  the 
addition    of    the    seller's    name.      A 


company  called  Sea  Salter  Co.  with 
beds  near  those  of  plaintiff  had  also 
used  the  name  for  a  long  period. 
The  defendants  had  used  term. 
Whitstable  only  on  oysters  bought 
from  plaintiff  but  now  claimed  right 
to  use  name  on  other  oysters.  Held 
it  was  found  below,  that  the  term 
Whitstable  meant  a  peculiar  class  of 
oyster  which  must  answer  the  re- 
quirements of  the  trade  as  to  ap- 
pearance and  also  that  it  was  a  geo- 
graphical term  in  the  sense  that  it 
must  have  a  connection,  more  or 
less,  with  Whitstable;  that  oysters 
answering  this  description  were  pro- 
duced by  defendants  and  might  be 
called  Whitstable;  that  the  plain- 
tiff had  not  established  that  the  pub- 
lic    understood     Whitstable     oysters 


Geographic  or  P:lace  Names.  251 

The  Chancellor  of  Oxford  University  had  long  made  bibles 
in  a  certain  style  which  were  called  "  Oxford  Bibles."  A 
printing  house  began  to  sell  ' '  Oxford  Bibles, ' '  although  it  was 
not  connected  with  Oxford  in  any  way.  It  was  held  that  the 
defendants  did  not  show  that  the  bibles  had  become  so  asso- 
ciated with  the  name  that  "  Oxford  "  had  come  to  be  the 
abstract  name  of  that  kind  of  a  bible,  but  that  the  defendants' 
use  of  the  name  passed  off  its  goods  as  those  of  the  plaintiff  — 
the  name  was  sufficiently  associated  with  the  plaintiff  for 
this.35 

A  person  who  puts  on  the  market  adulterated  goods,  that 
is,  goods  purporting  to  be  made  by  a  process  which  anyone  is 
free  to  use,  but  are  not  so  made,  is  doing  a  wrong.  Per- 
haps he  cannot  under  all  circumstances  be  sued  by  one  who  also 
is  making  goods  by  this  process,  as  there  is  in  him  no  special 
right  to  the  process  in  question.  Such  a  case  is  to  be  carefully 
distinguished  from  one  which  concerns  a  process  in  which  some 
one  dealer  has  acquired  rights  by  the  association  in  the  minds 
of  the  public  of  the  name,  not  with  the  process,  but  with  him 
personally.  Such  association  gives  him  rights  ample  to  secure 
standing  in  equity  to  sue.  In  considering  apparent  violations 
of  rights  in  place  names  which  indicate  process  this  distinction 
is  to  be  kept  in  mind. 

Certain  millers  in  Minneapolis,  Minnesota,  and  their  pre- 
decessors in  business  have  for  thirty  years  made  flour  by  the 
roller  process,  and  used  as  brands  the  words  "  Minneapolis," 
"  Minneapolis,  Minnesota,"  "  Minnesota,"  "  Minnesota  Pat- 
ent." The  words  "Minnesota"  or  "Minnesota  Patent" 
mean  that  the  flour  is  made  under  the  roller  patent  process 
somewhere  in  Minnesota.  These  words  signify  to  the  trade 
that  the  flour  was  made  at  a  Minneapolis  flouring  mill.  A 
dealer  in  Chicago,  111.,  obtains  from  mills  at  Milwaukee,  Wis., 
an  inferior  grade  of  flour,  which  he  labels  "  Best  Minnesota 
Patent,  Minneapolis,  Minn."  and  advertises  it  as  made  at 
Minneapolis,  Minn.,  with  the  result  that  the  public  is  deceived 
into  buying  this  flour  under  the  belief  that  it  is  made  in  Minn- 
were  oysters  from  their  beds  and  no  Oxford  v.  Wilmore- Andrews  rub. 
other.  Co.,  101  Fed.  443-1900  (C.  Ct.  S.  D. 

"°  Chancellor,    etc.,     University    of      N.  Y.). 


252  Unfair  Business  Competition. 

eapolis,  and  is  defrauded,  and  the  business  of  the  Minneapolis 
millers  is  damaged.  Held,  that  a  court  of  equity  may  grant 
relief  by  prohibiting  the  fraud  and  preventing  damage  to  the 
business  of  the  Minneapolis  millers.36 

Complainant  was  a  well  known  maker  of  watches  at  Elgin. 
Defendants,  wholesale  dealers  in  jewelry  and  watches,  doing 
business  in  Iowa,  adopted  the  name  "  Elgin  Jewelry  Com- 
pany "  and  stated  Elgin  to  be  their  place  of  business.  They 
rented  a  small  room  at  Elgin  and  had  a  clerk  there  who  merely 
received  and  answered  or  forwarded  correspondence.  There 
were  also  actual  misrepresentations  by  salesmen.  Held  unfair 
competition.37 

§  126.  Geographic  Names  May  be  Arbitrarily  Adopted  as 
Trade  Names. —  The  uses  of  geographical  names  so  far  no- 
ticed arise  naturally  from  association  of  goods  and  places.  We 
will  now  consider  the  arbitrary  use  of  geographical  names. 
By  this  term  is  meant  attaching  to  goods  a  geographical  name 
which  has  utterly  no  connection  or  association  with  the  goods, 
as  for  instance  the  use  of  the  name  "Vienna  Bread"  by 
Fleischmann,  a  baker  in  New  York.  "  Boston  Stores  "  and 
"  New  York  Stores  "  are  found  in  many  cities  outside  of  Bos- 
ton and  New  York.  These  names  are  used  arbitrarily,  when 
the  shops  to  which  they  are  applied  have  no  connection  with 
the  city  for  which  they  are  named.  This  does  not  mean,  how- 
ever, that  the  shopkeeper  is  to  be  held  to  have  misrepresented 
his  business  by  using  them.  It  is  not  fraudulent  misrepre- 
sentation to  call  a  store  in  Baltimore,  a  "  Boston  Store."  It 
is  merely  an  arbitrary  use  of  the  geographical  name  Boston. 

Because  Fleischmann  lived  in  New  York,  instead  of  Vienna, 
was  no  reason  for  prohibiting  him  from  using  "  Vienna,"  as  a 
name  of  his  particular  kind  of  bread.  No  one  was  deceived  by 
his  so  using  the  word,  because  everyone  knows  the  bread  is 
made  here;  but  were  it  a  fact  that  fresh  bread  could  be  im- 
ported from  Vienna  and  sold  in  New  York,  it  would  then  be 
unfair  trade  for  him  to  sell  bread  made  in  New  York,  in  com- 

86  Pittsburg-Washburn   Flour  Mills  "  Elgin  Nat.   Watch  Co.  v.  Love- 

Co.,  Ltd.,  et  al.  v.  Eagle   (C.  C.  A.      land,  132  Fed.  41-1904  (C.  C.  la.). 
7th    Cir.,    April   5,    1898),   86   Fed. 
608;  41  L.  R.  A.  162,  reversing  82 
Fed.  816-1897. 


Geographic  or  Place  Names. 


253 


petition  with  the  bread  imported  from  Vienna  under  the  name 
' '  Vienna  Bread. ' '  In  the  first  instance  the  name  was  used  ar- 
bitrarily, in  the  latter  descriptively.38 

There  is  no  doubt  but  that  a  geographic  name  may  be  used 
as  a  trade  name  in  a  manner  quite  unconnected  with  the  place 
of  which  it  is  the  name.  ' '  To  say  that  a  geographical  name  can 
never  be  used  in  a  proprietary  right  as  a  trade-mark  states 
the.  rule  far  too  broadly.  *  *  *  Had  he  (the  plaintiff) 
called  his  establishment  the  '  Chimborazo  Dental  Rooms  '  no 
intelligent  person  would  be.  likely  to  associate  the  designation 
with  a  mountain  in  South  America.  *  *  *  We  think  the  peti- 
tion shows  a  proprietary  right  in  the  title,  '  New  York,'  as  de- 
scriptive of  his  professional  abode."39    Such  a  name  is  used 


88  Fleischmann  v.  Sclmckmann,  62 
How.  Pr.  92-1881.  Plaintiff  made 
bread  under  name  "Fleischmann, 
Vienna  Model  Bakery,  Broadway  & 
Tenth  Street,  New  York,  New  York, 
Patent  applied  for."  Later  defend- 
ant sold  loaves  of  bread  similar  in 
form  to  plaintiff's  with  label  Schuck- 
mann's  Genuine  Vienna  Bakery,  154 
E.  54th  Street,  New  York.  At  Cen- 
tennial in  1876,  G.  F.  &  Co.,  under 
management  of  plaintiffs,  first  used 
word  "  Vienna "  for  baked  bread. 
At  close  of  centennial  plaintiff  pur- 
chased right  to  use  this  word.  Held, 
Vienna  bread  was  different  from 
other  kinds.  Defendant's  label  is 
similar  to  plaintiff's  and  an  imitation 
of  it.  No  complaint  is  made  of  qual- 
ity of  defendant's  bread,  but  this  is 
not  material.  Plaintiff  is  an  Aus- 
trian from  Vienna,  living  here.  He 
had  a  right  to  call  his  bread,  by  way 
of  distinction,  Vienna  bread.  No  de- 
ception is  practiced  as  everyone 
knows  the  bread  is  made  here,  citing 
"  Bismark  collars"  (Messerole  v. 
Tynberg,  4  Abb.  Pr.  N.  S.  410- 
1868). 

""  Sanders    v.    TJtt,    16    Mo.    App. 


322-1884.  Plaintiff  was  a  dentist  in 
St.  Louis,  who  had  for  twelve  years 
put  over  the  entrance  to  his  office  the 
words,  "  New  York  Dental  Rooms." 
The  defendant  earned  on  business 
about  nine  blocks  from  the  plaintiff, 
and  adopted  a  sign  similar  in  ap- 
pearance to  that  of  the  plaintiff, 
bearing  the  words  "  New  York 
Steam  Dental  Company."  In  other 
ways  also  he  employed  the  same 
words  in  advertising  his  business. 
Held  that,  strictly  speaking,  this  is 
not  a  controversy  about  a  trade- 
mark, but  rather  concerning  the 
good-will  of  the  plaintiff's  business. 
"  To  say  that  a  geographical  name 
can  never  be  used  in  proprietary 
right  as  a  trade-mark  states  the  rule 
far  too  broadly.  When  such  a  name 
is  employed  in  connection  with  the 
place  of  manufacture  or  production, 
no  person  manufacturing  or  produc- 
ing at  that  place  can  monopolize  it 
against  other  persons  manufacturing 
or  producing  at  the  same  place " 
(p.  325).  Citing  Brooklyn  White 
Lead  Co.  v.  Masury,  25  Barb.  416- 
1857;  Newman  v.  Alvord,  49  Barb. 
588-1867. 


254  Unfair  Business  Competition. 

not  to  indicate  a  particular  locality  connected  with  a  business, 
but  as  a  fancy  designation,  to  distinguish  the  factory  or  busi- 
ness or  the  persons  engaged  in  it  from  all  others  identified 
with  the  same  sort  of  business.  It  is  not  to  be  understood  from 
a  name  so  used  that  the  business  is  done  in  the  city  or  state 
bearing  the  name  used  or  that  either  of  those  geographical 
divisions  is  in  any  way  connected  with  it.  It  would  show  at 
most  only  how  the  proprietor  had  found  a  fancy  name  to  dis- 
tinguish his  place  of  business  from  others  of  like  character. 

§  127.  Such  Use  Must  be  Fair  and  Truthful.— Place 
names  when  so  used  are  governed  by  the  same  rules  as  other 
trade  names.  Care  must  be  taken  to  prevent  fraud  and  deceit 
arising  from  the  fact  that  they  have  a  meaning  usually  far 
better  known  and  understood  than  that  which  they  have  ac- 
quired from  association  with  the  goods  of  some  individual. 
The  question  is  not  so  much  what  is  the  exact  character 
of  the  rights  one  acquires  in  a  name  so  used,  but  rather  is  he 
using  it  in  a  deceptive,  misleading  way,  so  as  to  attract  trade 
away  from  another  user  of  the  name.  In  Van  Horn,  Ltd.  v. 
Coogan,40  Amos  Van  Horn  and  his  company  sold  the  "  Port- 
land "  cook  stove  which  was  made  for  him  alone  and  sold  only 
by  him,  and  became  well  known  in  and  near  Newark,  N.  J., 
under  that  name.  Defendant  was  a  rival  of  complainant  with  a 
store  a  few  doors  away.  The  defendant  began  to  sell  a  stove 
which  had  been  known  as  "  Columbian  Dandy  "  as  the  "  Port- 
land." It  was  a  similar  stove  to  the  Portland  stove  of  plain- 
tiff. Defendant  undersold  complainant  and  put  out  a  sign 
reading  "  Famous  Portland,"  "  Famous  Portland  Range,  re- 
duced, has  no  equal."  It  was  held  that  the  question  was  not 
"  Whether  the  complainant  has  a  property  in  the  name  by 
which  his  goods  are  distinguished  in  the  market,  but  *  *  * 
has  the  defendant  a  right  to  use  the  name  by  which  the  com- 
plainant's goods  are  known,  for  the  purposes  of  deception,  and 
in  order  to  attract  to  himself  that  custom  which,  without  the 
improper  use  of  such  name,  would  have  flowed  to  the  complain- 

"52  N.  J.  Eq.  380-1894,  28  Atl.   788. 


Geographic  or  Place  Names. 


255 


ant!  "    And  the  answer  to  the  inquiry  is  that  the  defendant  has 
no  such  right. ' ' 41 

The  use  of  a  geographical  name  in  this  arbitrary  way  spoken 
of  above,  as  in  the  case  of  the  Boston  store  in  Baltimore,  is 
usually  allowed  without  restriction;  but  it  cannot  be  used  in 
Boston  in  such  a  way  as  to  injure  any  business  there.    One  who 


41  Citing  Coats  v.  Merrick  Thread 
Co.,  149  U.  S.  562-1893;  37  L.  ed. 
847;  13  Sup.  Ct.  966;  Lawrence  Mfg. 
Co.  v.  Tennessee  Mfg.  Co.,  138  U.  S. 
537-1891;  34  L.  ed.  997;  11  Sup.  Ct. 
396;  Putnam  Nail  Co.  v.  Ben- 
nett, 43  Fed.  800-1890.  See  also 
Re  Green,  8  Pat.  Off.  Gaz.  729-1875; 
"  German  Sirup "  made  in  United 
States;  Re  Cornwall,  12  Pat.  Off. 
Gaz.  312-1877 ;  "  Dublin  "  soap  made 
in  United  States;  Hirst  v.  Denham, 
L.  R,  14  Eq.  Cas.  542-1872 ;  "  Liver- 
pool "  hair  cloth  made  at  Hudders- 
field.  Weyman  v.  Soderberg,  108 
Fed.  63-1901  (Circ.  Ct.  W.  D.  Wis.). 
Complainant,  a  Pittsburg  manu- 
facturer of  snuff,  used  name  "  Co- 
penhagen "  as  a  trade-mark,  not  to 
indicate  that  it  was  imported,  but  to 
attract  Scandinavian  trade.  Defend- 
ants, retail  dealers,  sold  snuff,  made 
in  Chicago,  and  put  up  in  jars 
labeled  "  Kjobenhavn  Snus."  There 
were  marked  differences  between  the 
jars  and  labels  of  the  two  parties. 
Held,  no  unfair  competition.  Col- 
gate v.  Adams,  88  Fed.  899-1898 
(C.  C.  N.  D.  111.).  Complainants 
had  long  made  and  sold  a  well-known 
toilet  soap  called  "  Cashmere  Bou- 
quet," and  generally  designated  in 
the  trade  as  "  Cashmere  Soap."  De- 
fendants then  put  on  the  market  a 
soap  stamped  "  Cashmere "  and 
designated  upon  the  boxes  "  Violets 
of  Cashmere."  Held,  unfair  compe- 
tition. International  Cheese  Co.  v. 
Phenix    Cheese   Co.,   118   App.    Div. 


(N.  Y.)  499-1907;  103  N.  Y.  Supp. 
362  (3d  Dep't).  Defendant  and  its 
predecessors  had  since  1880  made 
and  sold  cream  cheese  under  the 
name  of  "  Philadelphia  Cream 
Cheese "  although  the  cheese  does 
not  appear  to  have  been  made  at 
Philadelphia,  nor  to  have  differed  in 
composition  from  cream  cheese  of 
other  brands.  No  other  manufactu- 
rers, except  two  or  three  who  had 
been  compelled  to  abandon  its  use, 
had  used  this  name,  but  in  trade 
journals  and  restaurant  bills  of  fare 
the  term  "  Philadelphia  Cream 
Cheese  "  was  often  applied  to  cream 
cheese  in  general.  Plaintiff  then  be- 
gan to  sell  part  of  its  product  as 
"  Philadelphia  Cream  Cheese."  Held, 
that  defendant  was  exclusively  en- 
titled to  use  this  trade  name;  also, 
that  the  right  so  to  use  the  name  was 
unaffected  by  the  fact  that  a  distinct- 
ive trade-mark  was  applied  by  de- 
fendant to  all  its  products,  includ- 
ing this  brand  of  cheese.  It  was 
contended  in  Amoskeag  Mfg.  Co.  v. 
Garner,  54  How.  Pr.  297-1876,  that 
the  plaintiff's  claim  was  a  monopoly 
of  the  word  "Amoskeag,"  which  was 
a  geographical  name.  Defendant  ap- 
plied the  word  in  a  way  to  injure 
the  reputation  of  the  plaintiff's 
hiirhest  class  goods  to  which  alone  it 
was  applied  by  them.  The  defend- 
ant was  enjoined  from  the  use  of  it 
on  goods  inferior  to  those  on  which 
plaintiff  used  the  word. 


256  Unfair  Business  Competition. 

made  "  Chicago  Waists  "  elsewhere  than  in  Chicago,  and  so  in- 
jured the  business  of  the  plaintiff  who  was  making  "  Chicago 
Waists,"  in  Chicago,  was  enjoined.  Those  in  a  certain  section, 
interested  in  an  industry  located  there,  and  no  others,  are 
entitled  to  the  use  of  the  name  of  the  locality,  if  its  use  by 
persons  outside  that  section  actually  does  injure  the  trade  of 
those  living  in  the  section  or  will  tend  to  injure  it.42 

§  128.  Geographical  Names  Which  Indicate  Quality. — 
Names  like  "Sea  Island  Cotton,"  "Hungarian  Grass," 
"  California  Sherry,"  "  Connecticut  Tobacco,"  "  Kentucky 
Hemp  "  or  "  Virginia  Tobacco  "  denote  the  quality  of  the 
products  more  or  less  accurately  This  is  not  true  of  a  manu- 
factured article.  The  name  of  the  place  where  it  is  made  does 
not  serve  to  indicate  its  quality  or  composition.  Where  a  manu- 
facturer has  given  an  article  a  geographical  name,  which  he 
was  the  first  to  use  in  connection  with  it,  it  may,  from  long 
use  in  such  connection,  acquire  a  secondary  meaning,  and  come 
to  mean,  not  the  place  where  it  is  made,  but  that  it  is  the  prod- 
uct of  a  particular  manufacturer  or  made  according  to  his 
method,  or  at  some  particular  place.  In  Metcalfe  v.  Brand,4* 
it  was  shown  that  in  1810  B.  made  mustard  at  Lexington  which 
became  commonly  known  as  ' '  Lexington  Mustard. ' '  In  1841 
B.'s  wife  succeeded  to  the  business  and  then  sold  it  to  her  son 
McC.  who  changed  the  label  to  "  Burrowe's  Mustard,  Lexing- 
ton, Ky."  In  1869,  he  sold  to  Yates  &  Dudley  who  used  label 
"  Yates  &  Dudley,  successors  to  S.  D.  McCullough,  sole  manu- 
facturers of  Burrowe's  Mustard,  Lexington,  Ky."  In  July, 
1877,  they  sold  to  John  H.  Brand.  In  August,  1877,  Brand 
moved  business  to  Louisville,  Ky.  In  1873  Metcalfe  began 
to  make  mustard  at  Lexington,  and  in  1877  he  copied  the  can 
and  label  of  Brand  and  moved  into  building  vacated  by  him. 
An  injunction  was  granted  against  the  use  of  the  name  ' '  Lex- 

43  Gage-Downs   Co.  v.  Featherbone  another  who  makes  similar  waists  in 

Corset  Co.,  83  Fed.  213-1897  (Head-  a  different  state  and  city,  and  sells 

note).     "One   making   corset   waists  them  as  'Chicago  Waists'  with  the 

at     Chicago,     and    selling    them    as  manifest   intent   of   availing  himself 

'  Chicago  Waists,'  so  that  his  desig-  of   the    reputation    acquired   by    the 

nation    has    come    to    denote    among  other's  goods." 

purchasers  the  goods  made  by  him,  *"  S6  Ky.  331-1887;  5  S.  W.  773. 

is  entitled  to  an  injunction  against 


Geographic  or  Place  Names.  257 

ington,"  because  that  name  had  come  to  mean  the  mustard 
made  by  the  process  long  used  by  the  original  maker.  It  had 
acquired  a  reputation,  and  it  was  doubtless  a  reputation  based 
on  quality  and  not  on  its  historic  connection  with  the  origi- 
nal maker. 

Most  of  the  cases  already  mentioned  —  referring  to  articles 
which  have  become  associated  with  some  manufacturer  or 
plant,  and  which,  through  this  association,  bear  names  which 
are  now  synonymous  with  the  names  of  these  persons  or  fac- 
tories —  are  really  cases  dealing  with  names  which  have  come 
to  stand  for  some  quality  or  grade  of  goods.  In  a  sense,  there- 
fore, all  cases  of  secondary  use  of  geographical  names  deal 
with  quality.  The  rule  still  in  force  in  such  cases  was  laid  down 
in  1872  in  Newman  v.  Alvord.**  The  plaintiffs  used  the  word 
1 '  Akron  ' '  in  designating  a  cement  made  by  them  near  the  vil- 
lage of  Akron,  in  Erie  county,  State  of  New  York.  This  word 
had  been  used  by  the  plaintiffs  and  their  predecessors  in  busi- 
ness about  thirteen  years,  to  designate  the  original  quality  of 
their  cement.  The  defendants,  who  manufactured  cement  in 
Onondaga  county,  near  Syracuse,  knowing  that  the  plaintiffs 
had  for  years  used  the  word  "  Akron  "  as  a  trade-mark  to  des- 
ignate the  origin  and  place  of  manufacturing  their  cement, 
called  their  product  "Akron  Cement."  The  plaintiffs'  barrels 
were  labeled  as  follows :  "  Newman's  Akron  Cement  Co.,  manu- 
factured at  Akron,  N.  Y.—  The  hydraulic  cement  known  as  the 
Akron  Water  Lime."  The  defendants  labeled  their  barrels: 
11  Alvord 's  Onondaga  Akron  Cement  or  Water  Lime,  manufac- 
tured at  Syracuse,  N.  Y."  They  placed  the  word  "  Akron  " 
upon  their  label  for  precisely  the  same  reason  that  the  defend- 
ant in  the  flour  case45  placed  the  words  "  Minnesota  Patent, 
Minneapolis,  Minn."  upon  his  flour  sacks  and  barrels,  to  in- 
crease their  sales,  and  avail  themselves  of  the  reputation  ac- 
quired by  plaintiffs'  cement.  "  The  label,"  said  Earl,  J., 
"  was  calculated  to  induce  ordinary  buyers  to  believe  that 
they  were  purchasing  either  plaintiffs'  cement,  or  cement  of 
the  same  kind  and  value."  The  sole  question  to  be  deter- 
mined was  held  to  be  whether  the  plaintiffs,  who  were  the 

"51  N.  Y.  189.  Co.    v.    Eagle,    86    Fed.    608-1898; 

48  Pillsbimj-Washburn  Flour  THUls      infra,  41  L.  R.  A.  608. 
17       ' 


258  Unfair  Business  Competition. 

only  persons  engaged  in  manufacturing  and  selling  the  real 
Akron  Cement,  which  was  known  and  had  a  reputation  in 
the  market  as  such,  could  be  protected  in  the  use  of  the  word 
"  Akron  "  against  the  defendants,  who  used  it  to  defraud 
the  plaintiffs  and  deceive  the  public.  The  defendants  should 
not  be  permitted,  by  the  adoption  of  a  trade-mark  which  is 
untrue  and  deceptive,  to  sell  their  own  goods  as  the  goods 
of  the  plaintiffs,  thus  injuring  the  plaintiffs  and  defrauding 
the  public.  The  plaintiffs  had  given  a  reputation  to  Akron 
cement  in  the  market.  They  had  always  been  its  principal 
manufacturers  and  sellers,  and  at  the  time  of  the  commence- 
ment of  the  suit  were  the  sole  parties  who  could  be  injured 
by  the  fraudulent  use  of  the  trade-mark  by  the  defendants; 
and  hence  they  were  clearly  entitled  to  the  protection  which 
they  sought. 

The  name  "  Sea  Island  Cotton  "  means  cotton  of  a  certain 
grade  desirable  for  certain  known  purposes.  If  poor  or  low 
grade  cotton  is  marked  and  sold  as  "  Sea  Island  "  the  reputa- 
tion of  the  article  itself  as  well  as  the  trade  of  dealers  in  it  may 
suffer.  It  is  in  the  interest  of  honest  commerce,  honest  brand- 
ing of  goods  that  all  such  misrepresentation  be  stopped.  The 
same  may  be  said  of  manufactured  goods.  It  was  held  as  to  the 
owners  of  a  brand  of  ale  called  "  The  Bull  Dog  Bottling,"46 
that  if  a  brand  has  any  reputation  for  quality  its  owner  has  a 
right  to  such  protection  as  will  prevent  that  reputation  from 
being  injured  by  the  sale  of  inferior  goods  under  that  brand. 

46  Read  Brothers  v.  Richardson  &  black  ground  within  a  circular  band 
Co.,  45  L.  T.  N.  S.  54-1881  (Ct.  the  words  on  which  were  "  Celebrated 
App.).  Plaintiffs  were  bottlers  of  Terrier  Bottling,  E.  Richardson." 
ales  and  stouts  for  export.  Their  Held,  that  plaintiffs  were  entitled  to 
label  bore  a  bull  dog's  head  on  a  a  preliminary  injunction  against  the 
black  ground  within  a  circular  band  use  of  the  terrier's  head  by  defend- 
on  which  were  the  words  "  Read  ant  on  bottles  exported  to  the  colo- 
Brothers,  London.  The  Bull  Dog  nies.  The  rule  was  applied  that  a 
Bottling."  Their  goods  were  com-  rival  trader  should  not  be  permitted 
monly  called  "  Dog's  Head "  in  the  to  use  a  mark  that  would  tend  to 
colonies.  Defendants  also  bottled  give  his  goods  the  same  name  in  the 
and  exported  ales  and  stouts  with  a  market  as  those  of  his  rival, 
label  bearing  a  terrier's  head  on  a 


Geographic  or  Place  Names.  259 

"  Orient  "  lias  been  held  to  a  geographical  name  within 
meaning  of  section  5,  Trade-mark  Act  of  1905,  which  forbids 
nse  of  ''merely  a  geographical  name."47  "Oriental;"48 
"Continental;"49  "International"50  have  been  held  geo- 
graphic names. 

4T  Re  Crescent  Typewriter  Supply  tinental  Fire  Assn.,  41  C.  C.  A.  326 ; 

Co.,  30  App.  Cas.  (D.  C.)  324-1908.  101  Fed.  255. 

48  In    re    Hopkins,    29    App.    Cas.  ™  Koehler  v.   Sanders,    122    N.    Y. 

(D.  C.)  118-1907.  65;  4  L.  R.  A.  576;  25  N.  E.  235. 

**  Continental    Ins.    Co.    v.     Con- 


CHAPTER  X. 

Names  of  Articles  of  Merchandise. 

Section  129.  Acquired  or  secondary  meaning. 

130.  Names  descriptive  of  construction  necessary  to  an  article. 

131.  Unfamiliar  or  scientific  words  used  as  names  of  goods. 

132.  Artificial  or  made-up  words. 

133.  Use  of  identically  the  same  name,  by  competitors. 

134.  Misuse  of  made-up  names  will  be  enjoined  whether  registered 

or  not. 

135.  Names  appearing  to  the  eye  as  similar. 

136.  Names  idem  sonans. 

137.  Foreign  words  as  names  of  goods. 

138.  Abbreviation  of  names  of  goods  —  Nicknames. 

139.  Names  having  double  meaning. 

140.  Numerals  and  letters  as  names  of  goods. 

141.  Numerals  and  letters  used  to  designate  grade  of  goods. 

142.  Numerals  indicating   source  or  origin. 

143.  Initials  as  names  of  goods. 

144.  Numerals  used  to  designate  series. 

For  the  sake  of  clearness  we  will  consider  names  which  are 
given  to  articles  of  merchandise,  commodities,  and  goods  as 
distinguished  from  those  given  to  business  houses.  Each  is  a 
trade  name  and  much  the  same  rules  apply  to  both.  The  names 
of  commodities  usually  denote  their  quality,  their  source  or  ori- 
gin, who  made  them,  or  the  process  by  which  they  were  made ; 
but  frequently  they  are  given  some  name  which  cannot  be  asso- 
ciated with  anything  or  in  any  way  connected  with  the  article 
bearing  its  name. 

A  trade  name  is  defined  by  Mr.  Cutler,  "  Passing  Off," 
(Lond.  1904),  p.  36,  as  "  a  word  or  combination  of  words  (i. 
e.,  a  phrase)  which  is  used  by  the  trade  or  the  public,  or  as  is 
more  generally  the  case  by  both  the  trade  and  the  public  when 
asking  for,  or  odering,  or  otherwise  in  relation  to  the  goods 
(or  some  of  the  goods)  of  a  particular  trader." 

The  cases  here  considered,  relate  to  names  of  goods  which 
are  not  capable  of  exclusive  appropriation,  but  which  are  pro- 
tected against  general  use,  by  the  law  of  unfair  competition. 

[260] 


Names  of  Articles  of  Merchandise.  261 

Certain  of  these  names  are  geographical  in  character  and  such 
names  are  discussed  in  the  chapter  entitled  "  Geographic 
or  Place  Names."  (p.  226.) 

§  129.  Acquired  or  Secondary  Meaning. —  Certain  words, 
usually  abstract  in  character,  may  become  associated  with  the 
goods  of  one  person  in  particular  and  come  to  mean  his  goods 
alone  —  as  for  instance  "  Turpentine  Shellac"1  which  has 
been  held  to  mean  a  preparation  made  by  a  particular  company. 
So  also  of  such  words  as  "  Camels'  Hair  Belting  "2  which 
were  held  to  mean  the  particular  belting  made  by  one  house. 
The  authorities  referred  to  in  the  chapter  on  Miscellaneous 
Business  Names  (p.  226),  as  to  secondary  meaning,  apply  to 
names  of  goods.  See  also  chapter  on  Geographic  or  Place 
Names  (p.  226). 

§  130.  Names  Descriptive  of  Construction  Necessary  to  an 
Article. —  The  law  of  unfair  competition  does  not  protect  a 
name  which  is  based  on  or  is  truly  descriptive  of  the  construc- 
tion common  to,  or  characteristic  of,  the  article  in  question. 
This  has  been  held  particularly  true  when  the  rival  articles  de- 
scribed are  evidently  constructed  so  as  to  adapt  the  article  to 
the  natural  conditions  under  which  it  is  to  be  used,  and  the 
name  is  reasonably  descriptive  of  the  structure  which  has  re- 
sulted from  such  an  attempt  to  meet  these  natural  conditions. 
11  These  matters  are  characteristics  of  the  article  itself,  and 
no  dealer  is  entitled  to  impose  restriction  upon  his  competi- 
tors with  respect  to  them.  They  do  not  necessarily  or  natur- 
ally point  to  the  source  or  origin  of  the  goods. ' ' 3 

No  such  general  name  of  the  article  to  which  it  is  applied  can 
be  appropriated  exclusively,  for  it  is  publici  juris.  If  such  a 
name  could  be  appropriated  by  any  one  person,  it  would  be  as 

1  Standard      Varnish      Works      v.  ing   and   become   associated  with   its 

Fisher,    Thorsen    &    Co.,    153    Fed.  product  in  the  public  mind,  the  de- 

928-1907    (C.   C.   Oreg.).     Held,  on  fendant  might  be  enjoined  from  ap- 

demurrer,    that    although   the   words  plying  the  same  words  to  its  inferior 

"  Turpentine  Shellac,"  as  applied  to  product  for  the  purpose  of  mislead- 

a  coating  for  wood,  could  not,   be-  ing  the  public, 

cause   descriptive,    be    adopted   as   a  2  See  p.  166  of  this  volume, 

technical  trade-mark,  yet  after  they  B  Heide  v.  Wallace  &  Co.,  135  Fed. 

had  long  been  used  by  complainant  346-1905    (C.    C.    A.   3d   Cir.   at   p. 

so  as  to  acquire  a  secondary  mean-  347). 


262  Unfair  Business  Competition. 

if  a  person's  name  could  be  used  only  by  one  person  while  to 
the  rest  of  the  world  he  would  be  nameless.  Nor  is  such  a  name 
capable  of  appropriation  as  a  technical  trade-mark,  or  as  the 
exclusive  property  of  one  person  under  the  broader  rules  of 
unfair  competition.  "  Flaked  Oatmeal,"  "  Whirling  Spray," 
"  Air  Cushion,"  are  names  of  this  kind.  In  Marvel  Co.  v. 
Pearl,4  the  question  was  as  to  the  right  of  one  person  to  ap- 
propriate, to  the  exclusion  of  others,  the  elements  of  a  me- 
chanical construction  and  as  to  the  limitations  of  the  right  of 
one  person  to  manufacture  an  article  similar  to  that  of  an- 
other. The  plaintiff  made  a  bulb  syringe  to  use  as  a  douche, 
by  means  of  a  whirling  spray  discharge,  under  name  "  Whirl- 
ing Spray."  Defendant  made  one  like  it,  under  name  of 
"  Whirl  Spray."  Defendant's  spray  was  made  "  in  the  form 
it  must  be  made  in  order  to  accomplish  its  purpose,  and,  if 
the  making  in  that  form  is  any  representation  that  the  thing 
made  came  from  the  plaintiff,  it  is  because  of  the  extent  to 
which  the  plaintiff  had  made  and  displayed  and  sold  it  before 
the  defendants  began.  Unfair  competition,"  says  this  court, 
"  is  not  established  by  proof  of  similarity  in  form,  dimen- 
sions, or  general  appearance  alone.  Where  such  similarity 
consists  in  constructions  common  to  or  characteristic  of  the 
articles  in  question,  and  especially  where  it  appears  to  result 
from  an  effort  to  comply  with  the  physical  requirements  es- 
sential to  commercial  success,  and  not  to  be  designed  to  mis- 
represent the  origin  of  such  articles,  the  doctrine  of  unfair 
competition  cannot  be  successfully  invoked  to  abridge  the  free- 
dom of  trade  competition."5 

*  133  Fed.  160-1904   (C.  C.  A.  2d  similar     in     appearance,     stamping 

Cir.).  them    "Air    Cushion,"    and    "A.    C. 

°  Citing    Enterprise    Mfg.    Co.    v.  Consolidated    Hoof    Pad    Co.,"    and 

Landers,  131  Fed.  240-1904   (C.  C.  registered  "A.  C."  as  a  trade-mark. 

A.  2d  Cir.).     Revere  Rubber  Co.  v.  Held,  that  defendant  was  guilty  of 

Consolidated    Hoof    Pad    Co.,    139  unfair   competition.      Weingarten   v. 

Fed.  151-1905  (C.  C.  S.  D.  N.  Y.).  Charles  Bayer  &   Co.,  22  B.  P.  C. 

Complainant's     rubber     hoof     pads  341    (H.    L.    1905).      Plaintiffs,    an 

■were  known  as  "Air  Cushion  Pads  "  American  firm,  early  in  1902  began 

and  "A.  C.  Pads,"  and  the  business  to  advertise  and  sell  in  England  an 

had  originally  been  conducted  by  the  improved  form  of  what  were  known 

"Air  Cushion  Rubber  Pad  Co."    De-  as  "  straight-fronted  "  corsets.    Plain- 

fendant  made  rubber  hoof  pads  very  tiffs  used  the  words  "  Erect  Form." 


Names  of  Articles  of  Merchandise. 


263 


Although  these  names  cannot  be  appropriated  by  one  person, 
they  may  nevertheless  be  fraudulently  used ;  consequently  their 
use  is  regulated  and  sometimes  enjoined  by  equity,  just  as  in 
the  case  of  geographic  or  family  names.    See  §  145. 

§  131.  Unfamiliar  or  Scientific  Words  Used  as  Names  of 
Goods. —  A  name  may  be  descriptive  to  a  person  who  is  an 
expert  linguist,  if  the  name  is  taken  from  a  foreign  language, 
or  to  one  who  is  a  trained  scientist,  if  the  name  be  made  up 
from  chemical  or  other  scientific  terms,  and  yet  will  not  be  held 
to  be  descriptive  in  the  sense  in  which  that  term  is  used  here. 
Such  words  are  usually  unintelligible  to  the  public  and  to  them 
are  entirely  nondescriptive,  and  hence  to  them  they  are  arti- 
ficial words.  For  instance,  the  names  "  Pepto-Mangan  "  and 
"  Pepto-Manganate  of  Iron  and  Cascara  "  would  not  convey 
very  different  impressions  to  an  unlearned  man,  while  to  a 
chemist  they  might  convey  very  different  meanings.  On  that 
ground  they  have  been  held  arbitrary  and  fanciful  names.6 


Defendants,  English  manufacturers, 
a  few  months  later,  began  to  sell  cor- 
sets of  precisely  the  same  kind  under 
the  name  "  Erect  Form."  Held, 
that  defendants  were  entitled  to  use 
the  words  "Erect  Form,"  since  they 
had  not  yet  acquired  a  secondary 
meaning,  but  not  to  use  the  peculiar 
scroll  or  manner  of  printing.  Plain- 
tiffs held  entitled  to  that  extent  to 
an  injunction  and  account  of  profits. 
Parsons  Bros.  &  Co.  v.  Gillespie  & 
Co.,  15  R.  P.  C.  57-1897.  Plaintiffs, 
from  1890,  sold  "  Flaked  Oatmeal." 
Defendants  began  in  1894  to  sell 
"  Gillespie's  Flaked  Oatmeal."  Their 
packages  differed  entirely  in  get-up 
from  plaintiffs'.  Held,  that  "  Flaked 
Oatmeal "  were  descriptive  words, 
and  not  an  artificial  term,  and  that 
defendants  were  at  liberty  to  use 
them,  at  least  where  their  packages 
and  labels  in  no  respect  resembled 
plaintiffs'. 


*M.  J.  Breitenbach  Co.  v.  Span- 
genberg,  131  Fed.  160-1904  (C.  C.  S. 
D.  N.  Y.),  Holt,  District  Judge:  "  I 
do  not  think  that  the  name  '  Pepto- 
Mangan  '  is  simply  descriptive,  within 
the  meaning  of  that  term  in  the  law 
of  trade-marks.  It  seems,  if  analyzed 
by  a  person  familiar  with  the  Greek 
and  German  languages,  somewhat 
descriptive,  but  I  think  it  would 
seem  to  the  general  public  to  be  an 
artificial  and  manufactured  word." 
"  The  complainant  alleges  that  the 
inventor  adopted  the  arbitrary  and 
fanciful  words  '  Pepto-Mangan  '  as 
the  trade-mark  and  trade  name  by 
which  to  designate  his  preparation, 
and  the  demurrer  formally  admits 
this  allegation.  Evidence  might  pos- 
sibly lead  to  a  different  conclusion, 
but  on  this  demurrer  I  think  it  clear 
that  the  court  cannot  assume  that 
the  term  '  Pepto-Mangan '  is  purely 
descriptive,  but  must  assume  that  it 


264 


Unfair  Business  Competition. 


No  rule  can  be  laid  down  which  will  create  a  definite  line  of 
cleavage  in  these  cases.  "  Pepto-Mangan  "  and  "  Pepto- 
Manganate  of  Iron  and  Cascara  "  are  held  to  be  infringing 
names,  although  both  may  accurately  describe  the  article  to 
which  they  are  offered;  while  "  Cotosuet  "  is  held  not  to  in- 
fringe "  Cottolene, "  because  "  only  a  person  of  more  than 
average  heedlessness  and  carelessness  would  mistake  one  for 
the  other."7 

§  132.  Artificial  or  Made-up  Words. —  Many  of  the  names 
applied  to  goods  are  artificial,  "  made-up  "  names,  and  such 
names  are  the  sole  property  of  him  who  makes  them  up  and 
uses  them  on  his  goods.    We  deal  here  only  with  such  of  these 


is  an  arbitrary  and  fanciful  trade- 
mark. That  being  so,  it  is  not  at 
all  clear,  under  the  authorities,  that 
the  defendants  did  not  infringe  the 
rights  of  the  complainant  when  they 
adopted  as  the  name  of  their  prepa- 
ration '  Pepto-Manganate  of  Iron 
and  Cascara.'  Moreover,  the  com- 
plaint alleges  that  the  defendants 
have  substituted  their  tablets,  and 
supplied  them  to  customers  who  have 
asked  at  their  store  for  the  com- 
plainant's '  Pepto-Mangan.'  This  al- 
legation is  formally  admitted  by  the 
demurrer  and  constitutes  a  legal 
cause  of  action,  which,  if  supported 
by  evidence,  would  authorize  a  re- 
covery "  (at  p.  160). 

7  N.  K.  Fairbank  Co.  v.  Swift  & 
Co.,  64  111.  App.  477-92-1896.  The 
plaintiff  made  "  Cottolene,"  defend- 
ants made  "  Cotosuet."  Held,  that 
cottolene  indicates  an  article  derived 
from  the  cotton  plant,  while  cotosuet 
indicates  a  substance  derived  from 
the  cotton  plant  and  from  suet,  and 
that  an  ordinarily  intelligent  person 
would  not  be  deceived.  *  *  *  "  We 
can  well  understand  that  a  person  who 
desired  to  obtain,  for  cooking  pur- 
poses, a  vegetable  shortening,  might 


easily  be  induced  by  a  grocer  to  ac- 
cept '  Cotosuet,'  '  Cookene,'  '  Golden 
Suet,'  '  Suetene,'  '  Cornene,'  '  Clare- 
lene,'  '  Golden  Shortening,'  or  '  Su- 
preme Shortening,'  names  applied 
by  other  manufacturers  to  their  re- 
spective products  of  similar  articles 
to  '  Cottolene,'  although  such  pur- 
chaser had  distinctly  asked  for  '  Cot- 
tolene.' It  is  well  known  that  retail 
vendors  can,  to  the  ordinary  pur- 
chaser, sell  several  similar  articles 
which  they,  as  such  vendors,  en- 
deavor to  dispose  of,  and  that  if  the 
articles  are  substantially  alike  the 
seller  will  hear  no  '  kicking '  as,  in 
the  present  case  one  witness  testi- 
fied he  heard  none  when  he  gave 
'  Cotosuet '  to  people  who  inquired 
for  '  Cottolene.'  There  are  doubtless 
in  this  country  millions  of  people  to 
whom,  if  Seipp's  beer  were  given 
when  they  called  for  Blatz's  or  vice 
versa,  would  make  no  complaint." 
"  To  a  person  of  ordinary  observa- 
tion and  attention,  the  distinction 
between  '  Cottolene  '  and  '  Cotosuet ' 
is  obvious.  Only  a  person  of  more 
than  average  heedlessness  and  care- 
lessness would  mistake  one  for  the 
other." 


Names  of  Articles  of  Merchandise.  265 

names  as  are  not  registered  as  actual  technical  trade-marks. 
Or,  to  put  it  in  another  way,  we  deal  here  only  with  the  gen- 
eral principles  which  underlie  these  names,  and  which  apply  to 
the  owner's  rights  in  such  names,  it  being  remembered  that  by 
registering  it,  he  merely  creates  a  rebuttable  presumption  that 
the  name  is  his  own  property  exclusively,  and  that  all  other 
persons  had  notice  of  his  claim.  At  first  thought  it  would  seem 
that  the  owner's  right  in  such  names  must  be  so  clear  that  un- 
lawful use  of  the  name  would  be  rare.  This  is  far  from  the 
fact.  Frequently  the  name  is  taken  bodily  by  competitors  with 
no  pretense  at  varying  it,  while  at  other  times  it  is  used  in 
some  modified  form. 

§  133.  Use  of  Identically  the  Same  Name  by  Competitors. 
—  To  what  extent  will  the  principles  of  unfair  competition  al- 
low such  a  use  of  these  artificial  names?  The  answer  is  that 
seldom,  if  ever,  can  such  a  use  of  a  name  be  upheld.  It  may 
be  allowed  where  applied  to  widely  different  kinds  of  goods,  but 
not  always  even  in  such  cases.  The  Chancery  Court  of  Eng- 
land refused  to  allow  a  bicycle  company  to  sell  "  Kodak  Bi- 
cycles "because  of  the  loss  it  might  cause  to  the  maker  of  ' '  Ko- 
dak "  cameras.8 

§  134.  Misuse  of  Made-up  Names  Will  be  Enjoined 
Whether  Registered  or  Not. —  Usually  such  deliberate  use  of 
an  artificial  name,  although  no  attempt  has  ever  been  made  to 
copyright  or  register  it,  will  be  enjoined  and  penalized,  as  for 
instance,    ''Charter    Oak    Stoves,"    "She    Cigars,"    "Club 

*  Eastman  Photographic  Co.,  Ltd.  der  the  name  of  "  Kodak  Cycle  Co., 

v.  John  Griffith's  Cycle  Corp.,  Ltd.,  Ltd."   and   from   selling  either  their 

15  R.  P.  C.  105-1898.    Plaintiffs  ap-  bicycles     or     cameras     under     name 

plied    the    word    "  Kodak "    to    their  "  Kodak."     Eno  v.  Dunn  &  Co.,  10 

goods,    especially    to    cameras,    and  R.    P.    C.   261-1893.      Plaintiff   had 

they    made    a    specialty    of    cameras  long  sold  a  medicinal  powder  under 

suitable    for    bicycles,    and    called    a  the   title   "Fruit    Salt."      Defendant 

certain  kind  "  Bicycle  Kodaks."    De-  was    selling    tablets    called    "  Dunn's 

fendants  dealt  in  bicycles  and  simi-  Fruit     Salt     and     Potash     Tablets." 

lar  vehicles  but  did  not  sell  cameras.  Held,  that  he  was  not  entitled  to  use 

A    corporation    was    formed    with    a  the  words  "  Fruit  Salt "  as  a  part  of 

nominal  capital,  called  the  "  Kodak  the  designation  of  his  goods,  without 

Cycle  Co.  Ltd.,"  the  whole  of  the  stock  more     clearly     differentiating     them 

being   held   by   the   defendants,    and  from  plaintiff's, 
they  were  enjoined  from  trading  un- 


266 


Unfair  Business  Competition. 


Soda,"  "  Elastic  Seam  "  underwear.9      The  rule  here  stated 


'Filley  v.  Fassett,  44  Mo.  168- 
1869.  "  The  defendants  accumulated 
i.i  the  St.  Louis  market  a  quality  of 
stoves  (not  made  by  plaintiff)  with 
the  name  '  Charter  Oak  '  upon  them, 
which  they  held  for  sale  as  'Charter 
Oak  Stoves.'  They  were  aware  of 
the  plaintiff's  proprietorship  of  the 
'Charter  Oak'  trade-mark,  and  were 
proceeding  to  sell  in  defiance  of  the 
plaintiff's  rights."  Plaintiff  had 
been  the  first  to  use  "  Charter  Oak  " 
as  a  name  of  stove  and  had  tised 
it  for  a  long  time  when  this  suit 
was  begun.  The  mark  was  not 
registered.  Injunction  granted.  J.  A. 
Scriven  Co.  v.  Girard  Co.,  140 
Fed.  794-1905  (C.  C.  S.  D.  N.  Y.). 
Lacombe,  J. :  Preliminary  injunc- 
tion granted  against  use  of  words 
"Elastic  Seam"  or  "  Stretchi- 
seam,"  or  similar  words,  in  connec- 
tion with  a  longitudinal  yellow  strip 
inserted  in  the  garments.  The  opera- 
tion of  injunction  was  suspended 
thirty  days,  to  allow  changes  to  be 
made  in  stock  on  hand,  etc.  Paine 
&  Co.  v.  Daniell  &  Sons'  Breweries, 
Ltd.,  10  R.  P.  C.  71-1893.  It  was 
sought  to  restrain  defendant  from 
selling  "  John  Bull  Beer,"  plaintiff 
having  applied  this  name  to  its  beer 
for  some  time.  It  was  not  consid- 
ered that  the  term  "  John  Bull  "  in 
such  a  connection  was  descriptive  or 
jniblici  juris,  or  that  the  exclusive 
right  to  use  it  might  not  be  acquired. 
It  was,  however,  held  that  in  this  case 
sufficient  independent  use  of  the 
term  had  been  made  by  other  par- 
ties, though  in  a  different  territory, 
to  defeat  plaintiff's  claim  to  an  ex- 
clusive right.  Sartor  v.  Schaden, 
125  Iowa  696-1904;  101  N.  W.  511. 


Plaintiff  in  1894  began  to  apply  to 
the  boxes  containing  cigars  made  by 
him  a  stock  label  bearing  the  word 
"  She,"  and  continued  to  use  the 
word  as  a  kind  of  trade-mark  or 
trade  name,  building  up  a  consider- 
able business.  In  1899  he  caused 
the  word  to  be  registered  as  a  trade- 
mark. The  labels  were  made  by  a 
New  York  printer,  and  were  used 
by  others  besides  plaintiff,  being  in 
some  cases  applied  to  cigar-boxes 
outside  of  the  plaintiff's  territory, 
and  in  the  same  state,  though  not 
with  his  knowledge.  In  1902  de- 
fendant began  to  use  a  similar  label, 
with  the  word  "  She,"  for  cigars 
manufactured  by  him,  and  it  was 
shown  that  many  purchasers  were 
misled  as  to  their  origin,  supposing 
them  to  be  plaintiff's.  Held,  that  de- 
fendant was  guilty  of  unfair  compe- 
tition and  should  be  enjoined  from 
labeling  his  cigars  with  the  word 
"  She."  Cochrane  v.  MacNish  &  Son, 
App.  Cas.  225-1896.  Cantrell  and 
Cochrane  first  made  "  Club  Soda " 
and  long  after  defendants  put  on  the 
market  a  brand  of  soda  by  same 
name.  The  court  held  that  although 
no  one  could  mistake  MacNish's 
soda  for  that  of  complainant,  and 
no  one  in  trade  would  be  likely  to 
be  deceived,  consumers  would  not  no- 
tice the  difference  and  would  be 
deceived.  Eureka  Fire  Hose  Co.  v. 
Eureka  Rubber  Mfg.  Co.,  69  N.  J. 
Eq.  159-1905;  60  Atl.  561;  affirmed 
on  appeal  on  opinion  below;  modifi- 
cation refused,  s.  c.  65  Atl.  870-1907. 
Complainant  manufactured  prin- 
cipally fire  and  other  hose,  and  it 
was  well  known  by  the  trade  name 
"  Eureka,"   some  of  the  goods  hav- 


Names  of  Articles  of  Merchandise.  267 

does  not  apply  to  case  where  the  name  in  question  can  be  right- 
fully applied  to  the  goods  of  anyone  other  than  complainant.10 
§  135.  Names  Appealing  to  the  Eye  as  Similar. —  Mer- 
chants frequently  attempt  to  imitate  the  name  of  a  successful 
competitor's  house  or  company  or  brand  of  goods  just  closely 
enough  to  get  a  name  for  themselves  which,  while  different  in 
various  particulars,  will  sound  or  appear  the  same  to  those  not 
familiar  with  both,  and  cause  their  house  or  their  goods  to  be 
mistaken  for  that  of  their  competitors.  Sometimes  this  is  ac- 
complished by  names  combined  with  labels  both  differing  in  de- 
tails, but  bearing  the  same  salient  or  catch  features,  so  that  a 
casual  examination  will  detect  no  particular  differences.  Again, 
it  is  accomplished  by  names  which  are  so  framed  that  while 
they  are  quite  different  in  appearance,  yet  when  spoken,  the 
sound  of  them  is  very  similar.  Such  names  are  idem  sonans. 
The  average  retail  buyer  is  careless  as  to  details.  He  knows 
that  il  Honey-Comb  Whiskey  "  is  good, —  at  least  he  recalls 
that  a  whiskey  he  knows  to  be  good  has  a  name  very  like  that. 
Perhaps  he  has  not  purchased  it  in  a  long  time.  He  is  shown 
"  Honeymoon  "  Whiskey  and  is  quite  satisfied.  The  principal 
features  of  an  article  he  has  used  before  and  found  satisfac- 
tory are  all  that  he  remembers.  The  value  of  the  average  trade 
name,  then  is  not  in  details  but  in  its  salient  features, —  the 
things  about  it  the  average  buyer  remembers.  It  is  this  possi- 
bility of  easily  misleading  purchasers  that  causes  the  courts  to 
be  astute  and  zealous  in  condemning  all  spurious  labels  and 

ing  also  a  subsidiary  name  in  con-  Smelting  Syndicate,  Ltd.,   15   R.   P. 

nection  with  this.     Held,  that  it  was  C.    701-1898.      Plaintiffs    manufac- 

entitled  to  enjoin  defendant,  a  manu-  tured     a     variety     of     anti-friction 

facturer  of  hose  and  also   of  other  metal  to  which  they  gave  the  fancy 

and    noncompetitive     rubber    goods,  name         "  Magnolia        Anti-friction 

from  using  the  name  "  Eureka  "  in  Metal."     Defendants,  however,  were 

connection     with     its     hose,     even  permitted  to  apply  the  same  name, 

though   that   name   was   joined   with  "  Magnolia  ",  to  their  similar  metal, 

another  word  (such  as  "Acme,"  etc.),  as    it    did    not    appear   that    "  Mag- 

and  also  from  using  that  word  in  its  nolia  "  meant  only  the  manufacture 

corporate  title,  so  long  as  it  should  of    the    plaintiff,    nor    that    defend- 

make   or   sell    goods    in    competition  ants  used  the  name  to  pass  off  their 

with  complainant's.  goods     as     those     manufactured     by 

10  Magnolia  Metal   Co.   v.    Tandem  plaintiff. 


268  Unfair  Business  Competition. 

names  of  goods,  and  especially  those  which  are  not  identical 
but  similar. 

Repeatedly,  the  courts  have  branded  the  dealer  who  imitates 
his  rival's  name  or  label  as  closely  as  he  can,  as  a  fraudulent 
and  unfair  trader,  saying  that  no  further  evidence  is  needed  to 
show  this  fact  than  that  he  has  intentionally  adopted  a  label 
or  name  so  similar  to  that  of  his  rival.  The  honorable,  square 
business  man  desires  to  sell  his  goods  on  their  own  merits. 
Above  all,  he  desires  that  they  be  not  confused  with  goods  of 
others.  Hence  it  is  that  the  rule  has  arisen  that  where  a  dealer 
chooses  a  name  which  closely  resembles  in  sound  or  appearance 
that  of  a  successful  competitor,  a  presumption  is  created  of  un- 
fairness and  fraud.  Where  one  dealer  used  the  name  "  West 
End  Distillery  Co."  and  "  Ky.'s  Criterion  "  and  "  Honey- 
moon," and  another  adopted  the  name  "  East  End  Distillery 
Co."  and  "  Ky.'s  Credential  "  and  "  Honey-Comb  "  it  was 
held  fraudulent.  The  use  of  defendant's  names  was  lawful,  but 
the  use  by  him  of  the  name  "  East  End  Distillery  Co."  though 
in  itself  probably  legitimate,  Was,  in  connection  with  the  use  of 
the  brands  just  mentioned,  prima  facie  evidence  of  intentional 
simulation.11 

In  Pierce  v.  Guittard12  the  plaintiff  for  thirteen  years  made 
"  German  Sweet  Chocolate,"  the  name  German  being  that  of 
Samuel  German  who  was  employed  before  1867  by  plaintiff, 
and  who  in  1867  duly  assigned  to  plaintiff  the  exclusive  right 
to  use  his  name  on  the  chocolate.  Defendant  made  chocolate 
which  he  called  "  Sweet  German  Chocolate."  The  court  con- 
sidered that  the  defendant's  acts  made  possible  fraud  upon  the 
public,  and  on  the  authority  of  Lea  v.  Haley,13  and  McLean  v. 
Fleming,14  ordered  new  trial,  injunction  having  been  denied 
below. 

Contrast  with  the  above  the  following  case  as  showing  how 
close  the  distinction  is  between  similar  and  dissimilar  names. 
In  Wells  v.  Ceylon  Perfume  Co.,15  plaintiff  was  the  proprietor 
of  "  Rough  on  Rats,"  a  yellowish  brown  poisonous  powder, 

11  Kentucky  Distillers  &  Warehouse  u  L.  R.  5  Ch.  App.  Cas.  155-1869. 

Co.   v.   Wathen,  110  Fed.   641-1901  "96  U.  S.  245-1877;  24  L.  ed.  828. 

(C.  C.  Ky.).  "105  Fed.  621-1900   (C.  C.  S.  D. 

"68  Cal.  68-1885;  8  Pac.  645.  N.  Y.). 


Names  of  Articles  of  Merchandise.  269 

sold  in  boxes,  for  killing  vermin,  including  mosquitoes.  He 
also  had  a  trade-mark  for  the  words  "  Rough  on  Rats  "  as  ap- 
plied to  vermin  exterminators,  but  had  never  used  the  words 
1 '  Rough  on  Mosquitoes  "  or  "  Rough  on  Skeeters. ' '  Defend- 
ant put  up  and  sold,  under  the  name  ' '  Rough  on  Skeeters, ' '  an 
orange-colored  liquid  in  bottles,  having  an  odor  obnoxious  to 
mosquitoes.  Held,  that  defendant's  preparation  could  not  be 
mistaken  for  anything  that  plaintiff  offered,  and  that  there  was 
no  unfair  competition. 

Plaintiff  used  name,  "  Dr.  Morse's  Compound  Syrup  of  Yel- 
low Dock  Root."  Later  the  defendants  began  to  use  for  their 
product  the  name,  "  Dr.  Morse's  Improved  Yellow  Dock  and 
Sarsaparilla  Compound."  This  difference  was  held  not  suffi- 
cient to  be  of  any  avail.18    See  chapter  on  Similarity. 

§  136.  Names  Idem  Sonans.  —  The  circuit  court  in  N.  K. 
Fairbank  Co.  v.  Luckel,  King  and  Cake  Soap  Co.,17  says  that 
while  a  trade-mark  appeals  to  the  eye  a  trade  name  appeals  to 
the  ear.  It  is,  therefore,  natural  that  the  unscrupulous  com- 
petitor of  the  makers  of  ' i  Insectine  ' '  should  name  his  product 
"  Instantine."  Here  again  no  rules  can  be  laid  down,  as  is 
seen  by  a  comparison  of  this  case  and  the  following  one,  where 
plaintiff  manufactured  a  remedy  for  the  tobacco  habit  in  the 
form  of  tablets  and  called  it  "  No-To-Bac."  Defendant  manu- 
factured a  remedy  for  the  same  habit  also  in  tablet  form,  to 
which  it  gave  the  name  "  Baco-Curo."  There  were  marked 
differences,  in  color  and  otherwise,  between  the  tablets  and 
boxes  of  defendant  and  those  of  plaintiff,  and  it  was  held  there 
was  no  unfair  competition.18  If  in  this  case  there  had  been  any 
other  features  which  might  have  rendered  the  "  Baco-Curo  " 
likely  to  be  mistaken  for  the  plaintiff's  article  it  would  seem 
that  the  injunction  might  have  been  granted. 

A  name,  idem  sonans,  is  one  which  has  the  same  sound  as 
some  other  name.  When  a  competitor  of  "  Stephens'  Blue 
Black  "  ink  put  out  "  Steelpens  Blue  Black  "  ink,  he  made  use 

18  Alexander    Bros.    v.    Morse,    14  18  Sterling  Remedy   Co.  v.   Eureka 

R.  I.  153-60-1884.  Chemical  &  Mfg.  Co.,  70  Fed.  704- 

"N.   K.    Fairbank    Co.   v.    Luckel      1895  (C.  C.  W.  D.  Wis.). 
K.  &  C.  Co.,  102  Fed.  327;  106  Fed. 
498-1901  (Cir.  Ct.  Oregon). 


270  Unfair  Business  Competition. 

of  an  idem  sonans.19  In  Regis  v.  Jaynes  &  Co.,21  the  plaintiff 
who  applied  the  word  "  Rex  "  as  a  trade-mark  or  trade  name, 
to  dyspepsia  tablets  made  by  her,  was  held  entitled  to  restrain 
the  defendant  from  using  the  word  "  Rexall  "  in  connection 
with  similar  tablets,  although  defendant  began  the  use  of  the 
word  without  any  intention  to  simulate.  The  same  also  is  true 
of  the  case  Noel  v.  Ellis,22  where  complainant  sold  a  medicine 
under  the  name  of  "  Vitae-Ore."  Defendant,  an  agent  of  the 
}jlaintifr,  began  to  sell  a  similar  preparation  of  his  own,  under 
the  name  "  Vitalizing  Ore,"  and  the  dress  of  his  packages  in 
many  ways  resembled  that  of  complainant's.  Held  unfair 
competition.  The  use  of  the  name  "Foresight  Waist  Com- 
pany, Home  of  Fashion,"  for  a  store  placed  directly  opposite 
that  of  "  Forsythe  "  a  well-known  maker  of  waists,  was  held 
unfair.23 

One  purpose  in  the  adoption  of  a  name  which  is  so  similar 
in  sound  to  that  of  a  rival  as  to  cause  one  to  be  taken  for  the 
other  is  to  cause  purchasers  to  buy  by  ear,  not  by  eye ;  to  neglect 
the  label  and  depend  on  the  name. 

The  name  "  Gold  Drop  "  was  applied  by  defendant  to  a 
washing  powder,  competing  with  "  Gold  Dust,"  a  similar 
article  made  by  complainant  and  widely  advertised  and  known. 
Different  styles  of  labels  and  packages  were  used.    Fraud  re- 

"  Stephens  v.  Peel,  16  L.  T.  N.  S.  The  defendant  put  on  the  market 
145-1867.  Stephens'  Blue  Black  Ink  smoking  tobacco  of  the  same  shape, 
held  infringed  by  Steelpens'  Blue  color,  size  and  appearance,  with  the 
Black.  Cahn  v.  Gottschalk,  14  Daly  words  "  Mrs.  C.  B.  Muller  &  Co.'s 
(N.  Y.)  542-1888;  2  N.  Y.  Supp.  Best  Smoking  Tobacco,  437-£  Grove 
13.  "  Maryland  Club  Rye  Whiskey  "  Street,  Jersey  City."  Held  f raudu- 
held  infringed  by  "  Maryland  Jockey  lent.  Sperry  &  Co.  v.  Percival  Mill- 
Club  Rye  Whiskey,"  although  the  ing  Co.,  81  Cal.  252-1889;  22  Pac. 
words  as  branded  upon  the  barrels  651.  "  Germea,"  as  applied  to  a 
were  accompanied  by  entirely  dif-  meal  or  cereal,  held  infringed  by 
f  erent  designs.  Mrs.  G.  B.  Miller  &  "  Golden  Eagle  Germ,"  used  in  con- 
Co.  Tobacco  Manufactory  v.  Com-  nection  with  very  similar  labels. 
merce,  45  N.  J.  L.  18-1883.  Plain-  21 185  Mass.  458-1904;  70  N.  E. 
tiffs  made  and  sold  smoking  tobacco  480. 

wrapped  in  blue  wrappers  with  the  "Noel  v.  Ellis,  89  Fed.  978-1896 

words  "Mrs.  G.  B.  Muller  &  Co.'s  (C.  C.  S.  D.  Iowa). 

Best  Smoking  Tobacco,  97  Columbia  "  Forsythe   v.    Guzy,   N.    Y.    Sup. 

Street,  New  York,"  printed  upon  it.  Ct.,  O'Gorman,  J.,  Nov.  26,  1907. 


Names  of  Articles  of  Merchandise.  271 

suited  despite  this,  from  the  resemblance,  in  sound,  of  the 
names.  "  The  trade  name  differs  from  the  trade-mark  in  this," 
said  the  court,  "  that  one  appeals  to  the  ear  more  than  to  the 
eye.  The  advertisements  of  the  name  were  for  the  purpose  of 
having  the  intended  purchaser  ask  for  '  Gold  Dust  '  without  his 
having  any  knowledge  of  the  character  of  the  label  on  the  pack- 
age he  was  to  receive,  and  in  this  sense  the  fact  that  the  in- 
fringer of  the  name  used  different  devices  and  symbols  would 
have  no  great  force. ' ' 24 

Complainants  adopted  "  Sorosis  "  as  a  trade-mark  for  a 
shoe  for  women  manufactured  by  them.  After  the  shoe  had  be- 
come known  and  popular,  defendants,  shoe  manufacturers  of 
the  same  city,  began  to  use  the  name  "  Sartoris,"  changed  later 
to  "  Sartoria  "  and  "  Satoria,"  for  a  women's  shoe  of  their 
make,  very  similar  in  appearance  to  complainants'  but  in- 
ferior in  quality  to  "  Sorosis  "  shoes.  Such  action  constituted 
unfair  competition,  the  similarity  in  names  and  in  appear- 
ance together  rendering  it  very  probable  that  retail  dealers 
would  deceive  purchasers  into  buying  defendants'  shoes  as  and 
for  complainants'.25 

A  medical  company  had  built  up  a  large  sale  of  laxative  tab- 
lets called  "  Iron-Ox  Tablets,"  but  not  containing  oxide  of 
iron.  A  rival  then  began  to  put  on  the  market  "  Compound 
Iron  Oxide  Tablets,"  containing  besides  certain  useful  drugs, 
some  iron  oxide,  a  practically  useless  ingredient,  being  one 
of  the  least  soluble  forms  of  iron.     There  was  no  similarity 

"  N.    K.    Fairbank    Co.   v.    Luck  el  that   defendants   should   be   enjoined 

King   &    Cake   Soap    Co.,    102   Fed.  from   selling  any   such   preparations. 

327-1900  (C.  C.  A.  9th  Cir.).  under    any    name    of   which   "  Plas- 

M  Little  v.  Kellam,  100  Fed.  353-  mon "    formed   a   part.      Stewart    v. 

1900   (C.  C.  N.  D.  N.  Y.).     Inter-  Stewart,   91   Fed.    243    (C.   C.    A.)- 

national    Plasrnon,    Ltd.    v.    Plasmo-  Plaintiff   put   on   market   "  Steuart's 

nade,   Ltd.,   22    R.    P.    C.    543-1905  Dyspepsia  Tablets."    Defendant  later 

(Ch.    Div.).      Plaintiff    sold    various  began   to   sell   "Dr.    Stewart's   Dys- 

food   preparations    under    names    of  pepsia    Tablets."      Held,   "  It   needs 

which  the  word  "  Plasrnon "  formed  no    argument    to    show    that     these 

part,   such  as  Plasrnon   Cocoa,  Plas-  names  are  idem  sonans,  and  that  to 

mon    Biscuits,    Beef    Plasrnon,    etc.  use     both     of     them     in    connection 

Defendants  began  to  sell  tablets  and  with    dyspepsia    tablets    must    cause 

powder  for  making  a  beverage  which  great  confusion  in  a  sale  and  great 

they    called    "  Plasmonade."      Held,  wrong  to  purchasers." 


272  Unfair  Business  Competition. 

in  the  dress  of  the  two  packages.  Held,  that  defendants  should 
be  enjoined  from  using  the  words  "Iron  Oxide"  without 
clearly  distinguishing  their  goods.26  This  is  a  very  good  ex- 
ample of  two  names  that  are  idem  sonans. 

"  Steinway  "  pianos  have  been  long  known  as  of  high  grade. 
One  Henshaw,  a  competitor,  used  on  cheaper  pianos  the  name 
"  Steinberg  Pianos."  No  sufficient  explanation  was  given  of 
the  adoption  of  this  name,  and  he  was  using  the  name  as  a 
trade-mark  in  connection  with  a  device  on  his  goods  bearing 
a  general  resemblance  to  that  used  by  the  makers  of  Steinway 
pianos.  An  injunction  was  issued.  The  court  thought  defend- 
ant's combination  calculated  to  deceive,  "  None  the  less  that 
pianos  sold  by  the  defendant  are  very  much  cheaper  and  of 
lower  quality  than  those  sold  by  the  plaintiffs."27 

Further  illustrations  of  such  approximations  of  rival  trade 
names  are  as  follows :  ' '  Grape-Nuts  ' '  not  infringed  by 
"Grain-Hearts  Food;"28  "Chartreuse"  is  infringed  by 
' '  Chasseurs ;  " 20 "  Limette  ' '  infringes ' '  Lumetta ;  " 30 "  Stand- 
ard Computing  Scales  "  does  not  infringe  "  Standard 
Scales;"31  "The  Grocer"  infringes  the  "American  Grocer;"32 
"  The  Penny  Bell's  Life  and  Sporting  News  "  infringes 
* '  Bell 's  Life  in  London  and  Sporting  Chronicle ; "  33  "  Irving 
Hotel  ' '  infringes  ' '  Irving  House ; " 34  "  Independent  National 
System  of  Penmanship  "  infringes  "  Payson,  Dutton  &  Scrib- 
ner  's  National  System  of  Penmanship ; " 35  "  Liquor  Acidi 
Phosphorici  "    does    not    infringe    "  Hosford's    Acid    Phos- 

20  Iron-Ox  Remedy  Co.,  Ltd.  v.  Co-  81  Computing  Scale    Co.   v.   Stand- 
operative    Wholesale    Soc.,    Ltd.,    24  ard  Computing  Scale   Co.,  IIS  Fed. 
R.  P.  C.  425-1907  (Ch.  Div.,  Parker,  965-1902;  55  C.  C.  A.  459. 
J.).  M  American   Grocer  Pub.   Assn.  v. 

27  Steinway  &  Sons  v.  Henshaw,  5  The  Grocer  Publishing  Co.,  25  Hun, 
R.  P.  C.  77-1887  (Ch.  Div.).  N.  Y.  398-1881. 

28  Postum   Cereal  Co.  v.  American  M  Clement  v.  Maddick,  5  Jur.  N.  S. 
Health  Food  Co.,  56  C.  C.  A.  360-  592-1859. 

1902;  119  Fed.  848.  Si  Howard  v.  Henriques,  3   Sandf. 

28 A.    Bauer    &    Co.    v.    Order    of  (N.  Y.)    725-1851. 
Carthusian  Monks,  56  C.  C.  A.  485-  G"  Potter    v.    McPherson,    21    Hun 

1903;  120  Fed.  78.  (N.  Y.)  559-1880. 

"Drewry    &    Son    v.    Wood,    127 
Fed.  887  (C.  C.  Minn.). 


Names  of  Articles  of  Merchandise. 


273 


phate;"36  "Six  Big  Tailors"  infringes  "Six  Little 
Tailors ; " 37  "  New  York  Commercial  ' '  does  not  infringe  the 
"Commercial  Advertiser;"38  "Cuticle"  soap  does  not 
infringe  "  Cuticura  "  soap;39  "  Castorets  "  infringes  "  Cas- 
carets. ' ' 40 

In  Burnett  v.  Phalon41  the  two  words  were:  "  Cocoaine  " 
and  "  Cocoine."  In  Rowley  v.  Houghton,42  the  two  words 
were  "  Hero  "  and  "  Heroine."  In  Wamsutta  Mills  v.  Allen,43 
the  two  words  were  "Wamsutta"  and  "Wamyesta."  In 
Glen  Cove  Mfg.  Co.  v.  Ludeling,44  the  words  were  "  Maizena  " 
and  "  Maizharina."  In  Celluloid  Mfg.  Co.  v.  Cellonite  Mfg. 
Co.45  the  two  words  were  "  Celluloid  "  and  "  Cellonite."  In 
Enoch  Morgan's  Sons  Co.  v.  Edler,4*  the  two  words  were  "  Sa- 
polio  "  and  "  Saponit."  In  Estes  v.  Leslie47  the  two  words 
were  "  Chatter-box  and  Chatter-Book."  An  injunction  was 
issued  in  all  these  cases.  Further  illustrations  of  names  al- 
leged to  be  similar  in  sound  are  found  in  the  note.47a 


M  Rumford  Chemical  Works  v. 
Muth,  1  L.  R.  A.  44-1888;  35  Fed. 
524. 

87  Mossier  v.  Jacobs,  66  111.  App. 
571-1896. 

M  Commercial  Advertiser  Assn.  v. 
Haynes,  26  App.  Div.  (N.  Y.)  279- 
1898;  49  N.  Y.  Supp.  938. 

"*  Potter  Drug  &  Chemical  Corp. 
v.  Pasfield  Soap  Co.,  102  Fed.  490- 
1900,  affirmed. 

40  Sterling  Remedy  Co.  v.  Sper- 
mine Medical  Co.,  112  Fed.  1000- 
1901  (C.  C.  A.  7th  Cir.);  106  Fed. 
414-1901  (C.  C.  A.  2d  Cir.). 

a  3  Keyes  (N.  Y.)  594-1867. 

42  2  Brewst.  (Pa.)  303-1868. 

43  Cox's  Manual  660-1878  (Com. 
PL  Phila.). 

"22  Fed.  823-1885  (C.  C.  S.  D. 
N.  Y.). 

45  32  Fed.  94-1887. 

48  Cox's  Manual  714-1890. 

47  29  Fed.  91-1886  (C.  C.  S.  D. 
N.  Y.). 

18 


471  Rowland  v.  Michell,  14  R.  P.  C. 
37-1896  (reported  in  Ch.  Div.  13  R. 
P.  C.  457).  Plaintiff  sold  "Row- 
land's Army  and  Navy  Paregoric 
Tablets."  Defendant  enjoined  from 
selling  other  goods  as  "Army  and 
Navy  Paregoric  Tablets,"  with  wrap- 
pers resembling  plaintiff's.  "  Queen  " 
and  "  Queen  Quality,"  105  Fed.  375. 
"  Congress  "  and  "  High  Rock  Con- 
gress," 45  N.  Y.  291.  "Carlsbad 
Sprudel  Salt"  and  "  Kutnow's  Im- 
proved Effervescent  Carlsbad,"  71 
Fed.  167.  "Home"  and  "Home 
Delight,"  59  Fed.  284.  "Apolli- 
naris  "  and  "  London  Appollinaris," 
33  L.  T.  N.  S.  242.  "Glentield" 
and  "  Royal  Palace  Glenfield,"  L.  R. 
5  H.  L.  508.  "Budweiser"  and 
"  Milwaukee  Budweiser,"  87  Fed. 
864.  "Sunlight"  and  "American 
Sunlight,"  88  Fed.  484.  "Royal" 
and  "Royal  London,"  76  Fed.  465. 
"  Health  Food  "  and  "  Sanitarium 
Health  Food,"  104  Fed.  141.    "  Com- 


274  Unfair  Business  Competition. 

§  137.  Foreign  Words  as  Names  of  Goods. —  If  the  gen- 
eral or  abstract  name  given  an  article  in  a  foreign  land,  in 
the  language  of  that  country  is  used  for  the  same  article  here, 
it  is  equally  an  abstract  name  and  a  descriptive  term,  and  may 
be  used  by  all  persons  here  just  as  it  may  be  used  by  all  persons 
in  the  foreign  country.  In  1869,  Selchow  introduced  in  United 
States  a  game  which  he  called  Parcheesi,  a  name  similar  to  the 
name  given  it  in  India.  Chaffee  used  the  name,  in  selling  the 
same  game  here.  Selchow  alleged  he  had  no  exclusive  right 
to  the  game,  but  that  he  had  exclusive  right  to  use  the  name. 
Defendant  claimed  the  word  is  the  Indian  name  of  the  game 
and  hence  descriptive  and  can  be  used  by  anyone.  Selchow 
built  up  a  large  demand  for  Parcheesi  and  the  name  became 
widely  identified  with  the  game  by  him.  "  It  is  clear  to  this 
court  that,  if  defendant  is  permitted  to  make  and  sell  this  game 
under  the  name  Parcheesi,  they  will  take  away  a  part,  if  not  a 
large  part,  of  complainants'  business  to  their  great  damage. 
That  they  intend  so  to  do  is  plain,  and  they  use  the  word  Par- 
cheesi, not  because  it  is  the  Hindoostanee  or  foreign  name  of 
the  game,  for  they  are  compelled  to  concede  it  is  not  (although 
so  very  similar  as  before  stated),  but  because  it  is  the  name  of 
the  game  given  to  it  by  the  complainants,  whose  enterprise  in 
business  has  caused  it  to  become  under  that  name  a  popular 
game,  and  an  extensive  article  of  commerce,  from  the  manu- 
facture and  sale  of  which,  under  that  name,  large  profits  have 
been  and  may  be  derived.  It  seems  plain  that  to  permit  the  de- 
fendant to  make  and  sell  this  article  under  the  name  '  Par- 
cheesi '  will  legalize  a  fraud  upon  complainants'  rights.  It  is 
not    intended    to    hold    that    defendant    may    not    use    the 

fort  "    and    "  Home    Comfort,"    127  Cashmere,"  88  Fed.  899.    "  Hohner " 

Fed.  962.     "  Sanitas "  and  "  Condi-  and   "  Improved   Hohner,"   52    Fed. 

Sanitas,"  56  L.  T.  N.  S.  621.  "  Port-  871.       "  Pride  "     and     "  Pride     of 

land  "  and  "  Famous  Portland,"  52  Syracuse,"  82  N.  Y.  519.    "  Gei-man 

N.  J.  Eq.  380.     "Roy  Watch  Case  Household    Dyes"    and    "Excellent 

Company  "  and  "  Camm-Roy  Watch  German  Household  Dyes,"   94  Wis. 

Case    Co.,"    58    N.    Y.    Supp.    979.  583.     "Guinea  Coal  Company"  and 

"  Star  "   and   "  Lone   Star,"  51   Fed.  "  Pall  Mall  Guinea  Coal  Company," 

832.     "  Cashmere  "  and  "  Violets  of  L.  R.  5  Ch.  App.  Cas.  155-1869. 


Names  of  Articles  of  Merchandise.  275 

Hindoo stanee  name  of  this  game,  for  that  everyone  has  the 
right  to  do."48 

Complainant  used  the  French  word  "  brassiere  "  to  desig- 
nate an  article  of  women's  wear  made  by  him  (a  combined  cor- 
set cover  and  bust  supporter),  calling  it  the  "  De  Bevoise  Bras- 
siere." Held,  that  the  word  was  descriptive  and  that  defend- 
ant should  not  be  enjoined  from  selling  a  similar  article  under 
the  name  "  H.  &  W.  Brassiere."  49 

§  138.  Abbreviation  of  Names  of  Goods  —  Nicknames. — 
Nicknames  are  not  confined  to  persons.  Goods  have  nicknames ; 
business  houses  have  them.  Oftentimes  they  are  just  as  valu- 
able as  the  full  name  of  the  goods  or  the  formal  name  of  the 
house,  sometimes  more  valuable.  Business  firms  with  long, 
cumbersome  names,  often  become  known  among  their  neighbors 
and  often  to  the  public  that  patronize  them  merely  by  the  ini- 
tials of  the  names  making  up  the  full  name  of  the  firm  or  com- 
pany. So  of  names  of  commodities.  "  S.  &  W."  revolvers 
are  no  doubt  as  well  known  to  the  shooting  public  as  "  Smith 
&  Wesson  "  revolvers.  Abbreviations  like  "  B.  &  A.,"  "  B. 
&  M.,"  "  D.  L.  &  W.,"are  names — not  initials  merely,  and  the 
right  to  use  them  of  great  value.  C.  G.  V.  and  F.  I.  A.  T. 
are  names  of  importance  in  the  automobile  world,  although 
they  are  merely  the  initials  of  the  men  in  the  firm  building 
the  cars  bearing  the  names.  For  a  competitor  to  advertise, 
using  such  a  name,  which  is  a  nickname  of  a  competitor,  may 
well  cause  confusion  and  injury,  and  such  a  use  is  actionable 
under  the  rules  of  unfair  competition.  See  §  143.  "  It  would 
be  mere  self-stultification  for  this  court  to  assume  not  to  see 
what  every  practical  person  must  see  *  *  *  that  the  phrases 
1  Le  Page's  Glue,'  '  Glue  made  by  Le  Page,'  '  Glue  made 
by  the  Le  Page  Company, '  mean  or  come  to  mean,  one  and  the 
same  thing,  and  that  both  will  inevitably  be  soon  styled  alike 
in  the  market."50 

48  Selehow    v.    Chaffee    &~    Selchow  t0  Le  Page   Co.   v.   Russia   Cement 

Mfg.  Co.,  132  Fed.  996-99-1904  (C.  Co.,  51  Fed.  941-1S92  (C.  C.  A.  2d 
C.  S.  D.  N.  Y.).  Cir.) ;  17  L.  R.  A.  354. 

"  Charles  R.  De  Bevoise  &  Co.  v. 
H.  &  W.  Co.,  69  N.  J.  Eq.  114-1905 
(Pitney,  V.  C). 


216  L'nfair  Business  Competition. 

There  are  certain  brands  which  have  more  than  one  name. 
The  brand  of  milk  sold  as  "  Milkmaid  "  and  "  Milkmaid 
Brand  "  came  to  be  called  by  the  public  "  Dairymaid  "  and 
"  Dairymaid  Brand,"  and  it  was  held  that  the  latter  names 
were  trade  names  denoting  the  plaintiffs'  goods.51  So  the  words 
"  Sportsman  Special  Quality  "  brandy  used  with  a  label  on 
which  was  a  hunting  scene  with  two  huntsmen.  This  brand 
came  to  be  known  as  "  Huntsman  Cherry  Brandy."  52 

§  139.  Names  Having  Double  Meaning. —  In  looking  at  a 
trade  name  the  law  seems  to  subordinate  the  identity  of  the 
owner  to  the  identity  of  the  name.  It  recognizes  that  it  is  un- 
avoidable that  the  world  contains  many  persons  of  the  same 
name.  It  is  in  the  power  of  the  courts  to  prevent  such  a  condi- 
tion in  trade  names.  It  also  recognizes  the  fact  that  the  public 
are  much  more  likely  to  be  deceived  and  injured  by  the  existence 
of  two  brands  of  ale  called  "  Stone  Ale  "  than  by  the  existence 
of  two  persons  who  are  called  James  Stone.  For  this  reason, 
traders  are  forbidden  to  dub  their  goods  or  firms  some  name 
which  the  public  has  come  to  associate  with  another  man's 
goods  or  firm.  Under  ordinary  conditions  no  one  is  under  ab- 
solute necessity  to  put  in  his  trade  name  any  word  which  will 
mislead  others.  He  can  adopt  a  name  as  different  from  all 
others  as  he  will.    There  is  no  rule  forbidding  that. 

For  thirteen  years  Samuel  German  made  "  German  Sweet 
Chocolate."  Defendant  began  later  to  sell  "  Sweet  German 
Chocolate. ' '  Plaintiff  showed  that  defendant  asked  what  name 
the  plaintiff  used  for  their  chocolate  and  when  he  learned  that 
it  was  ' '  German  Sweet  Chocolate  ' '  said  that  he  would  use  the 
name  "  Sweet  German  Chocolate."  The  court  held,  that  on 
such  a  state  of  facts  it  was  necessary  to  decide  nothing  farther 
than  that  fraud  existed.  When  plaintiff  had  established  a  busi- 
ness for  his  goods  and  was  carrying  it  on  under  a  particular 
name,  for  some  other  person  to  assume  the  same  name  with 
-slight  alterations, in  such  away  as  to  induce  persons  todeal  with 
him  in  the  belief  they  were  dealing  with  the  first-mentioned 
person  was  fraud.53    This  was  a  deliberate  misuse  of  a  rival's 

51  Anglo-Swiss    Milk    Co.    v.    Met-  *  Pierce  v.   Guittard,  68   Cal.   68- 

talf,  3  R.  P.  C.  28.  1885;  S  Pae.  645. 

"Re  Barker's   Trade-Mark,  53  L. 
T.  N.  S.  24. 


Names  of  Articles  of  Merchandise.  277 

name,  taking  advantage  of  its  double  meaning.  Alexis  Godillot 
used  his  initial  letters  "A.  G.,"  combined  in  a  monogram  for 
many  years  on  groceries  made  by  liim  in  France,  and  sold  by 
him  and  others  as  his  agents  in  the  United  States.  In  1884  he 
sold  the  right  to  use  the  mark  in  the  United  States  to  T.  W.  & 
Co.  In  1894  the  T.-W.  Co.  resold  the  right  to  Godillot  and 
later  the  T.-W.  Co.  was  sold  to  the  American  Grocery  Com- 
pany, which  began  business  at  the  former  stand  of  the  T.-W. 
Co.,  and  began  to  use  a  mark  consisting  of  the  letters  "A.  G. 
Co."  in  a  monogram  similar  to  Godillot 's.  This  name  it  ap- 
plied to  different  articles,  and  claimed  the  right  to  use  these 
letters  without  restriction,  in  dealing  in  groceries.  "  There 
is  no  good  reason  for  such  a  close  imitation  of  the  plaintiff's, 
trade-mark,  and  no  justification  therefor.54 

In  Plant  Seed  Co.  v.  Michel  Plant  and  Seed  Co.™  plain- 
tiff succeeded  "  Plant  Brothers."  Both  parties  to  this 
action  are  corporations.  The  defendant's  predecessors  incor- 
porated under  the  name  of  "  H.  Michel  &  Company, ' '  and  later 
changed  their  name  to  "  Michel  Plant  and  Seed  Company." 
The  plaintiff  alleges  that  this  name  was  a  scheme  of  piracy 
against  the  plaintiff's  business  and  to  deceive  the  public  by  di- 
verting to  themselves  the  trade  of  the  plaintiff.  The  business 
of  both  the  plaintiff  and  defendant  was  the  sale  of  plants  and 
seeds.  "  The  word  '  Plant  '  is  one  of  very  common  use,  and 
may  very  properly  be  used  to  designate  a  business  and  the 
fact  that  the  '  Plant  Family  '  were  the  founders  of  the  plain- 
tiff's business  and  its  principal  stockholders  affords  no  reason 
why  the  defendant  could  not  use  the  word  to  designate  its  busi- 
ness provided  it  was  done  for  an  honest  purpose ;  and,  with  the 
same  proviso  the  defendant  had  the  right  to  adopt  its  present 
corporate  name.  We  do  not  think  that  the  resemblance  be- 
tween the  two  corporate  names  is  sufficiently  close  to  raise  a 
probability  of  mistake  on  the  part  of  the  public,  or  to  show  a 
design  or  intention  on  the  part  of  the  defendant  to  deceive. ' ' 5® 
*  *  *  "  Under  such  circumstances  the  choice  of  names  by 
which  a  new  company  can  designate  its  business  so  as  to  sat- 

M  Godillot    v.    American     Grocery         "7  Mo.  App.  313-20-1889. 
Co.,    71    Fed.    873-75-1896    (C.    C.  "Citing   McCartney    v.    Garnhart, 

N.  J.).  45  Mo.  593-1870. 


278  L'niaik  Business  Competition. 

isfy  the  requirements  of  law  and  at  the  same  time  avoid  trouble 
with  the  other  companies  is  very  limited,  and  it  would  not  be 
wise  for  the  courts  to  adopt  too  stringent  rules  in  determin- 
ing controversies  like  the  one  under  consideration.  If  such  a 
case  is  free  from  actual  fraud,  it  is  better  for  the  courts  to  per- 
mit some  confusion  aud  friction  in  business  than  to  hamper 
and  discourage  trade  by  judicial  interference." 

§  140.  Numerals  and  Letters  as  Names  of  Goods. — 
Numerals  and  letters  are  free  to  the  use  of  all,  yet  the  law  of 
unfair  competition  forbids  their  use  to  the  detriment  and  loss 
of  others.  If  they  are  so  used  on  goods  and  in  evident  imita- 
tion of  a  form  adopted  by  another  to  distinguish  his  goods, 
with  definite  purpose  to  deceive,  disguising  one's  own  goods 
thereby  and  inducing  the  public  to  believe  that  they  are 
the  goods  of  another,  it  is  unfair.  Such  a  use  of  letters  is  well 
illustrated  by  Birmingham  Small  Arms  Co.,  Ltd.  v.  Webb  & 
Co.57  Plaintiffs  made,  among  other  things,  cycle  accessories, 
including  spanners.  They  stamped  most  of  their  goods  with 
the  initials  of  their  name,  "  B.  S.  H.,"  and  these  letters  had 
become  associated  with  the  plaintiffs  in  the  public  mind.  Thedr 
spanners  bore  a  certain  trade-mark  in  addition  to  these  letters. 
Defendants  began  to  sell  spanners  bearing  the  letters  "  B.  A. 
S."  which,  it  was  claimed,  stood  for  "  Best  All-round  Span- 
ners." Held,  that  defendants  should  be  enjoined  from  using 
these  letters,  even  though  there  was  originally  no  intention  to 
deceive  on  defendant's  part. 

§  141.  Numerals  and  Letters  Used  to  Designate  Grade  of 
Goods. —  The  United  States  Supreme  Court  holds  as  to  the 
right  to  the  exclusive  use  of  letters  and  numerals  that :  ' '  Let- 
ters or  figures  which,  by  the  custom  of  traders  or  the  declara- 
tion of  the  manufacturer  of  the  goods  to  which  they  are  at- 

"24  R.  P.  C.  27-1906  (Ch.  Div.).  above  and  "Quality"  below,  the 
Standard  Table  Oil  Cloth  Co.  v.  whole  being  inclosed  in  am  ellipse  of 
Trenton  Oil  Cloth  &  Linoleum  Co.,  about  the  same  size  as  that  in  eom- 
71  N.  J.  Eq.  555;  03  Atl.  846-1900.  plainant's  mark.  Held,  that  while 
Complainant  used  as  a  trade-mark  defendant  should  not  be  required  to 
the  initials  oTc,  with  "  Standard  "  discontinue  the  use  of  the  letters  T. 
above  and  "  Company "  below,  all  O.  C.  in  its  mark,  it  should  be  en- 
inclosed  in  an  ellipse.  Defendant  joined  from  using  the  ellipse  in 
used  as  a  trade-mark  the  initials  T.  combination  with  them. 
0.   C.   &  L.   Co.,   with  "Superior" 


Names  of  Articles  of  Merchandise.  279 

tached  are  only  used  to  denote  quality,  are  incapable  of  ex- 
clusive appropriation,  but  are  open  to  use  by  anyone  like  the 
adjectives  of  the  language;"58  but  in  Lawrence  Mfg.  Co.  v. 
Tennessee  Mfg.  Co.,50  Fuller,  C.  J.,  said,  after  citing  Wither- 
apoon  v.  Carrie  and  Thompson  v.  Montgomery,  that  if  "  the 
letters  '  L.  L.'  formed  an  important  part  of  plaintiff's  label 
and  the  defendant  had  used  them  in  such  a  way  and  under 
such  circumstances  as  to  amount  to  a  false  representation 
which  enabled  it  to  sell  and  it  did  sell  its  goods  as  those  of  the 
plaintiff  and  this  without  the  plaintiff's  consent  or  acquies- 
cence, then  plaintiff  might  obtain  relief  within  the  principle 
of  the  cases  just  cited." 

Where  a  number  is  originally  used  by  a  manufacturer  to 
designate  a  particular  kind  of  goods  as  distinguished  from 
other  patterns  or  kinds  made  by  him,  and  has  come  to  designate 
in  the  trade,  goods  of  like  kind  or  quality,  other  manufacturers 
who  make  such  goods  may  designate  them  by  that  number  with- 
out infringement.60 

This  is  squarely  denied  by  the  Ehode  Island  court,  which 
holds  that  a  trader  may  not  denote  his  corresponding  styles  of 
goods  by  the  numbers  used  on  those  styles  by  his  competitor. 
In  American  Solid  Leather  Button  Co.  v.  Anthony?1  the  com- 
plainant designated  the  different  styles  of  buttons  and  nails 
made  by  it  by  arbitrary  numerals,  such  as  "30,"  "40," 
"  11.1,"  etc.,  by  which  these  different  styles  became  known  in 
the  trade.  Held,  that  the  defendants  had  no  right  to  designate 
the  corresponding  styles  of  their  own  similar  goods  by  the 
same  numerals,  which  the  court  deemed  to  denote  not  style  or 
quality  alone,  but  origin  as  well.  This  was  held  not  to  apply 
to  certain  of  the  numerals,  "  60  "  and  "  70,"  which  had  pre- 
viously been  applied  to  the  same  styles  by  another  manu- 
facturer. 

"  R.  12  "  on  writing  paper  —  a  private  mark  for  office  con- 
venience —  will  not  be  restrained  where  it  'has  no  meaning  in 
the  stationery  trade.62 

"Manufacturing    Co.    v.    Trainer,  Smith,  89  Fed.  486-1898   (C.  C.  N. 

101  U.  S.  55;  25  L.  ed.  993.  D.  111.). 

68 138  U.  S.   537-1891;   34  L.  ed.  "15  R.  I.  338-1886;  5  Atl.  626. 

997;  11  Sup.  Ct.  396.  m  Marcus  Ward  v.  Ward,  40  N.  Y. 

"Smith    &    Davis    Mfg.    Co.    v.  St.  Rep.  792;  15  N.  Y.  Supp.  913. 


280  Unfair  Business  Competition. 

Mr.  Hesseltine  says63  that  "  words,  letters,  or  numbers 
chosen  to  designate  the  grade  or  quality  of  the  product  of  a 
manufacturer,  while  not  legal  trade-marks,  on  proof  of  use  with 
fraudulent  intent  on  the  part  of  another  will  be  protected  on 
the  ground  of  unfair  trade."  He  goes  on  to  mention  the  use  of 
the  numeral  "  303  "  by  Gillott  to  denote  a  pattern  of  pens 
made  by  him,04  and  "  H.  H."  and  size  "  6  "  used  by  a  plow 
maker  on  plows.  Defendant  used  "  H.  H.  6  "  and  was  en- 
joined.65 

Gillott  long  manufactured  steel  pens  of  a  peculiar  pattern, 
and  upon  both  the  pens  and  the  box  labels  were  stamped  the 
figures  "  303  "  and  the  words  "  Joseph  Gillott,  extra  fine." 
The  number  "  303  "  was  not  used  to  denote  size  or  grade,  but 
was  arbitrarily  chosen  to  denote  the  make  or  pattern  of  the  pen, 
and  dealers  generally  designated  these  pens  as  "  303  "  pens. 
Held,  that  plaintiff  was  entitled  to  the  exclusive  use  of  these 
figures  as  a  trade-mark,  and  defendants  were  not  at  liberty  to 
sell  pens  of  the  same  design  as  plaintiff's,  put  up  in  similar 
boxes  and  similarly  stamped  except  that  defendant's  name  was 
substituted  for  plaintiff's.66  This  was  a  case  of  unfair  competi- 
tion although  the  courts  and  bar  at  that  time  (1872)  did  not 
know  the  doctrines  of  the  law  of  unfair  competition  under 
that  name. 

§  142.  Numerals  Indicating  Source  or  Origin. —  Numerals 
may  come  to  indicate  origin, —  in  a  secondary  sense, —  may 
come  to  mean  the  goods  of  the  plaintiff  when  used  as  a  part  of 
a  mark,  and  when  so  used  by  another  the  court  will  enjoin  the 
use  of  the  entire  mark,  figures  and  all. 

In  Lawrence  Mfg.  Co.  v.  Lowell  Hosiery  Mills?7  the  plaintiff 
stamped  upon  its  hosiery  of  a  certain  grade  a  device  consisting 
of  an  eagle  surmounting  a  wreath  inclosing  its  name,  with  the 
figures  "  523  "  conspicuously  printed  below.  Defendant  for 
the  purpose  of  misleading  customers,  and,  as  the  court  found, 
with  that  actual  result,  stamped  its  hosiery  with  an  eagle  sur- 

0  "  Digest   of  the  Law   of   Trade-  "  Ransome  v.  Bentall,  3  L.  J.  Ch. 

marks   and   Unfair   Trade,"   Boston,  N.  S.  161. 

p.  153-1906.  M  Gillott  v.   Esterbrook,  48  N.   Y. 

64  Gillott  v.  Kettle,  3  Duer,  (N.  Y.)  374-1872. 

624.  "  129  Mass.  325-1880. 


Names  op  Articles  of  Merchandise.  281 

mounting  a  double  circle  or  garter,  with  the  figures  ll  523  " 
printed  below  in  the  same  size  and  style  as  on  plaintiff's  mark. 
Defendant  was  entitled  to  use  the  eagle  and  double  circle,  hav- 
ing adopted  them  before  the  plaintiff  had  adopted  its  device. 
Held,  that  the  numerals  indicated  origin  and  that  defendant 
should  be  restrained  from  continuing  their  use  as  part  of  his 
mark. 

In  Shaiv  Stocking  Co.  v.  Mack™  complainant  manufac- 
tured at  Lowell  hosiery  of  high  reputation  and  designated  one 
style  by  the  figures  "  830."  The  label  bore  the  trade-mark 
"  Shawknit,"  in  script  with  a  flourish  and  the  words  "  Seam- 
less Half  Hose,"  with  the  name  of  the  manufacturer  and  the 
figures  "  830."  Defendants  at  Albany  bought  large  quantities 
of  complainant's  goods  and  with  complainant's  consent,  in  ef- 
fect, held  themselves  out  to  the  public  as  selling  agents  of  com- 
plainant. They  then  began  to  buy  of  a  Connecticut  manufac- 
turer goods  similar  to  complainant's  "  830  "  style,  but  infe- 
rior, and  sold  them  under  a  label  generally  resembling  com- 
plainant's in  appearance  and  bearing  the  word  "  Seamless  "  in 
script  of  similar  style,  including  the  flourish,  followed  by  the 
words  "  Half  Hose,  Double  Heels,"  with  defendant's  name  and 
address  and  the  figures  "  830."  The  court  enjoined  them  from 
using  the  figures  "  830  "  to  designate  the  Connecticut  goods, 
and  from  using  on  the  label  the  word  "  Seamless  "  printed  in 
imitation  of  "  Shawknit." 

§  143.  Initials  as  Names  of  Goods. —  The  fact  that  the  let- 
ters used  by  the  plaintiff  are  the  initials  of  the  defendant  will 
not  excuse  his  adopting  them  as  a  trade  name,  if  to  do  so  will 
cause  confusion.  Charles  Bayer  stamped  his  initials  "  C.  B." 
on  corsets.  After  corsets  so  marked  and  so  known  had  long 
been  on  the  market,  Connell  Brothers  &  Co.  were  not  entitled 
to  mark  their  corsets  conspicuously  "  C.  B."  with  the  addition 
of  "  &  Co."  in  small  letters,  nor  to  advertise  them  as  "  C.  B." 
corsets.60     See  §  138. 

"21  Blatch.  1-1882  (C.  C.  N.  Y.).  its  predecessor  had  long  used  as  a 

99  Bayer  v.  Baird,  15  R.  P.  C.  615.  trade-mark  the  letters  M  F  in  mono- 

American  Tin  Plate   Co.  v.   Licking  gram,  inclosed  in  a  circle,  and  their 

Roller  Mill   Co.,  158  Fed.  690-1902  product  was  known  and  designated  in 

(C.     C.     Ky.).       Complainant     and  the  trade  as  "  M.  F."  plate.    Defend- 


282  Unfair  Business  Competition. 

§  144.  Numerals  Used  to  Designate  Series,  Etc. —  Series  of 
numbers  used  by  a  manufacturer  of  labels  in  its  catalogues  and 
on  boxes  containing  the  labels,  not  primarily  to  indicate  origin, 
but  to  designate  the  color,  shape  and  size  of  the  label,  each  kind 
bearing  a  different  number,  do  not  in  themselves  constitute 
good  trade-marks,  nor  is  such  manufacturer  entitled  on  the 
ground  of  unfair  competition  to  restrain  the  use  of  the  same 
numbers  in  the  same  way  and  for  a  similar  purpose  by  an- 
other in  connection  with  his  own  name,  there  being  no  simula- 
tion in  dress  or  style  of  package.70 

In  Avery  v.  Meikle,11  there  is  a  full  discussion  of  the  relation 
of  unfair  competition  to  the  use  of  numerals  denoting  series  of 
goods. 

In  Deering  Harvester  Co.  v.  Whitman  and  Barnes  Co?2  a 
distinction  is  made  between  letters  and  numerals  used  on  parts 
of  a  manufactured  article  to  designate  the  size,  shape  and 
capacity  of  the  article  and  to  distinguish  it  from  other  sizes 
and  shapes  with  no  intention  or  expectation  of  indicating  by 
them  origin  or  source  of  manufacture,  and  marks  which  are 
designed  primarily  to  distinguish  each  of  the  articles  to  which 
they  are  affixed,  from  similar  articles  produced  by  others.  The 
court  holds,  speaking  of  marks  used  to  identify  repair  parts  of 
mowing  and  reaping  machines,  that  "Any  office  which  these 
marks  perform  as  designations  of  origin  is  purely  accidental  " 
(p.  380).  It  considers  that  all  persons  may  make  repair  parts 
and  hence  it  is  not  unfair  trade  to  use  these  symbols  in  such 
manufactures. 

ant  then  began  to  make  plate  marked  rival's   goods   to    be   known    by    the 

with  the  letters  "  M.  F.  H.,"  claim-  same  name  as  those  of  the  original 

ing  that  it  had  acquired  the  right  to  manufacturer. 

use  them  from  a  man  whose  initials  m  Dennison    Mfg.    Co.    v.    Scharf 

they  were,  although  it  appeared  that  Tag,  Label  &  Box  Co.,  135  Fed.  625- 

be  did  business  and  was  known  as  1905  (C.  C.  A.  6th  Cir.). 

"  Martin  Herman,"  without  the  mid-  "  81   Ky.    73.      See   also    Westcott 

die    initial.      Held    unfair    competi-  Check  Co.  v.  Oneida  Nat.  Check  Co., 

tion;  it  not  being  permissible  to  use  122  App.  Div.  (N.  Y.)  260 

such  a  mark  as  will  tend  to  cause  a  72  91  Fed.  376. 


Names  of  Articles  of  Merchandise.  283 

This  case  does  not,  it  would  seem,  decide,  finally,  the  questions 
it  discusses,  for  it  is  certain  that  if  its  principles  be  widely 
applied  great  injury  must  be  done  to  the  business  and  reputa- 
tion of  many  manufacturers  of  articles  needing  repair  parts, 
if  it  is  possible  for  consumers  to  be  misled  into  buying  cheap 
parts  that  may  interfere  with  the  use  of  such  articles.  See 
§1*9 


CHAPTER  XI. 

Simulation  of  Articles  Themselves. 

Section  145.  Copying  of  the  features  essential  to  construction. 

146.  Copying  distinguishing  features  as  a  whole. 

147.  Copying  whole  article  —  making  a  facsimile. 

148.  Copying  a  single  feature  or  part. 

149.  Making  repair  parts  for  articles  manufactured  by  others. 

150.  Copying  articles  on  which  patents  have  expired. 

151.  Copying  the  color  of  goods. 

It  is  hard  to  lay  down  a  general  rule  as  to  whether  mere  imi- 
tation of  the  form,  color  or  external  details  of  an  article  of 
trade  itself  constitutes  unfair  competition.  It  is,  of  course, 
true  that  simulation  in  other  respects,  as  in  labels,  wrappers  or 
name,  is  often  accompanied  by  imitation  of  the  general  appear- 
ance of  the  goods  themselves,  and  that  will  always  be  taken  into 
account,  in  connection  with  the  other  points  of  resemblance. 
But  such  cases  fall  rather  under  the  general  head  of  "  Dress." 

We  will  now  consider  those  cases  in  which  imitation  of  the 
goods  themselves,  either  as  a  whole,  or  in  some  prominent  fea- 
ture, is  the  sole  or  at  least  a  salient  and  essential  element  of  the 
case.  We  must  recognize,  in  the  first  place,  that  generally 
speaking,  in  the  absence  of  patent  protection,  there  can  be  no 
monopoly  in  form,  color,  construction  and  general  design  of  an 
article.  But  this  rule  is  to  be  applied  subject  to  certain  qualifi- 
cations which  are  illustrated  by  the  cases  referred  to  below. 
We  often  find  peculiar  and  arbitrary  features  in  the  form, 
structure,  arrangement  of  parts,  or  otherwise  in  the  general  ap- 
pearance of  the  article  itself  devised  in  large  part  for  the  pur- 
pose of  distinguishing  the  product,  often  not  necessary  to  its 
usefulness,  but  still  identified  with  it  in  the  public  mind.  In 
such  cases,  imitation  of  the  form  and  general  appearance 
of  the  article  itself,  including  these  features  of  it,  may  amount 
to  unfair  competition. 

There  are  cases  which  hold  that  imitation  of  form  and  ap- 
pearance of  the  goods  themselves  does  not  amount  to  unfair 

[284] 


Simulation  of  Articles  Themselves.  285 

competition.  "Where  a  manufacturer  of  sectional  book-cases 
not  only  followed  complainant's  system,  which  was  not  pro- 
tected by  valid  patent,  but  used  the  same  sizes,  styles  and 
varieties  of  wood  and  the  same  finish,  it  was  held  not  to  consti- 
tute unfair  competition.1  This,  however,  is  not  the  usual  rule. 
Copying  the  different  distinguishing  features  of  an  object  will 
ordinarily  be  condemned. 

The  true  rule  has  been  laid  down  by  Knowlton,  C.  J.,  of  Mas- 
sachusetts,2 in  holding  that  dealers  must  recognize  that  when  a 
competitor  honestly  adopts  a  distinctive  get-up  for  his  commod- 
ity, with  the  evident  purpose  of  distinguishing  his  goods  from 
those  of  others,  it  is  their  duty  to  observe  that  fact,  ' '  not  in- 
deed to  the  abandonment  of  their  right  to  do  what  was  reason- 
ably necessary  to  success  in  the  management  of  their  own  busi- 
ness ;  but  to  the  extent  of  so  conducting  their  business  as  not  to 
unreasonably  and  unnecessarily  interfere  with  the  plaintiff's 
business  through  deception  of  the  public. ' ' 

§  145.  Copying  of  Features  Essential  to  Construction. — 
The  foregoing  cases  turn  in  part  on  the  rule  that  while  a  manu- 
facturer may  adopt  distinguishing  marks  to  denote  the  origin 
of  his  goods,  or  adopt  some  other  peculiar  way  of  distinguish- 
ing them,  the  very  idea  of  distinguishing  them  forbids  the  use 
of  such  universal  characteristics  as  belong  to  other  goods  of  the 
kind,  and  which  the  public  have  the  right  to  use.  No  one  can  be 
forbidden  to  copy  or  make  use  of  features  which  are  the  neces- 
sary features  of  the  article.  There  is  a  vast  difference  in  the 
legal  effect  of  copying  an  unnecessary  bend  or  turn  which  gives 
individuality  to  a  bicycle  frame,  and  of  copying  the  tube  in 
which  the  turn  is  made- which  may  be  essential  to  the  construc- 
tion of  the  frame. 

In  Marvel  Co.  v.  Fuller  Co.?  the  boxes  and  labels  were  suffi- 
ciently differentiated,  but  it  was  claimed  that  there  was  a  mis- 
leading similarity  in  the  goods  themselves  (spray  syringes.) 
Held,  that  unfair  competition  was  not  shown  since  (as  Wheeler, 
D.  J.,  said)  "  There  is  nothing  about  the  article  as  made  and 
sold  by  the  defendants  that  is  not  necessary  in  the  making  and 

1  Globe-Wernicke      Co.      v.      Fred  2  George  G.  Fox  Co.  v.  Glynn,  191 

Maceu  Co.,  119  Fed.  696-1902  (C.  C.      Mass.  344,  85  N.  E.  417-1908. 
A.  6th  Cir.).  3125  Fed.  829-1903  (C.  C.  N.  Y.). 


286  Unfair  Business  Competition. 

operation  of  such  an  instrument.  It  is  made  in  the  form  that 
it  must  be  made  in  order  to  accomplish  its  purpose,  and  if  the 
making  in  that  form  is  any  representation  that  the  thing  made 
came  from  the  plaintiff,  it  is  because  of  the  extent  to  which  the 
plaintiff  had  made  and  displayed  and  sold  it  before  the  defend- 
ant began."    See  §  130. 

§  146.  Copying  Distinguishing  Features  as  a  Whole. — 
"Where  one  person  had  long  sold  mills  of  a  particular  design 
and  appearance  for  grinding  coffee  and  drugs,  and  a  competi- 
tor put  on  the  market  mills  resembling  them  so  closely  in  size, 
shape  and  details  of  structure,  in  coloring  and  ornamentation 
as  to  be  practically  indistinguishable,  except  for  the  names  of 
the  makers  to  be  found  on  each,  it  was  held  by  Lacombe,  J.,  that 
"  a  court  of  equity  will  not  allow  a  man  to  palm  off  his  goods 
as  those  of  another  whether  his  misrepresentations  are  made 
by  word  of  mouth,  or,  more  subtly,  by  simulating  the  collocation 
of  details  of  appearance  by  which  the  consuming  public  has 
come  to  recognize  the  product  of  his  competitor. ' ' 4 

In  Globe-W ernicke  Co.  v.  Brown  &  Besly,5  the  defendant  in 
1897  changed  entirely  the  style  and  appearance  of  the  box-files 
for  letters  and  papers  which  it  had  been  selling,  and  closely 
imitated  in  many  details  of  construction,  form,  color,  markings, 
etc.,  including  certain  words  and  emblems,  the  box-files  long 
sold  by  complainant  as  "  Leader  "  and  "  Eureka  "  files.  It 
was  unlawful  for  defendant  thus  to  copy  the  ensemble  of  these 
files,  with  the  purpose  and  effect  of  misleading  the  public,  al- 
though each  feature  of  the  files,  separately,  was  open  to  public 
use. 

Again  a  defendant  reproduced  the  phonograph  disks  of  the 
plaintiff  by  making  a  matrix  from  disks  made  by  the  latter 
which  were  on  the  market.  Plaintiff's  disks  were  black  and 
red,  with  a  picture  of  a  dog  in  the  center,  while  defendants 
made  their  disks  dark  brown  with  an  eagle  and  their  name  on 
them;  both  had  red  seal  centers.  The  court  held  that  the  law 
of  unfair  competition  could  be  invoked  and  a  preliminary  in- 
junction was  issued  ' '  against  the  manufacture  and  sale  of  disk 

'Enterprise  Mfg.  Co.  v.  Landers,  °  121  Fed.  90-1902    (C.  C.  A.  7th 

Frary  &  Clark,  131  Fed.  240-1904  Cir.).  See  Muelle  Mfg.  Co.  v.  Mc- 
(C.  C.  A.  2d  Cir.).  Donald  Co.,  104  Fed.  1001-1909. 


Simulation  of  Articles  Themselves.  287 

records,  black  or  nearly  black  in  color,  with  a  red  seal  center 
inscribed  with  decoration  and  letters  in  gilt,  when  such  records 
contain  the  shop  numbers  or  catalogue  numbers  of  complain- 
ant's disk  records,  or  when  the  sound-recording  grooves 
thereon  are  copies  of  the  grooves  on  complainant's  disk  rec- 
ords."6 

In  Wilcox  &  Gibbs  Sewing  Machine  Co.  v.  The  Gibbens 
Frame,7  after  the  expiration  of  the  patent  on  a  machine,  the 
frame  of  which  was  made  in  a  peculiar  form  or  shape  (the 
letter  G),  complainant  claimed  to  be  still  entitled  to  a  trade- 
mark right  in  the  use  of  this  shape.  The  shape  of  the  frame 
was  not  arbitrary,  but  had  practical  advantages.  Held,  that 
complainant  had  no  exclusive  right  to  use  it. 

§  147.  Copying  the  Whole  Article  —  Making  a  Facsimile. 
—  The  foregoing  cases  show  the  application  of  the  rule  against 
copying  the  general  features  by  which  the  public  has  come  to 
know  an  article,  even  though  the  simulated  features,  if  used 
alone,  be  such  as  may  be  properly  adopted  by  anyone.  Usually 
these  cases  involve  other  features  unfair  in  character,  such  as 
simulating  the  design  of  the  labels,  the  similarity  of  the  names, 
the  use  of  the  same  colors,  or  the  copying  of  the  form  and  shape 
of  containers.  There  are,  however,  some  cases  where  nothing  is 
involved  except  the  copying  of  the  commodity  itself.8  A  good 
example  is  E.  P.  Dutton  &  Co.  v.  Cupples,9  where  the  plaintiff 
had  for  several  years  published  a  uniform  series  of  illustrated 

'Victor    Talking    Machine    Co.    v.  in  the  two  locks  were  such  as  dealers 

Armstrong,    132    Fed.    711-12-1904  generally  would  notice,  this  was  held 

(C.  C.  S.  D.  N.  Y.).  to  be  unfair  competition.     It  is  re- 

'17  Fed.  623-1883    (C.  C.  S.  D.  marked   in    the   opinion    that  where 

N.  Y.).  two  articles  are  submitted  the  court 

8  Yale  &  Towne  Mfg.  Co.  v.  Alder,  can    judge    correctly    as    to    resem- 

154    Fed.    37-1907     (C.    C.    A.    2d  blances     and     tendency     to     deceive 

Cir.,  reversing  149   Fed.   783-1906).  and    the    testimony    of    experts    or 

Plaintiff    manufactured    a    padlock,  of     dealers    is    of    little     assistance 

which  defendant  closely   imitated  in  (p.  3S). 

form,  size,  coloring,  lettering  and  de-  "117  App.  Div.   (N.  Y.)  1st  dep't, 

tails  of  finish,  then  sold  his  product  172-1907;    102    N.    Y.    Supp.    309; 

at  a  price  lower  than  plaintiff's.     Al-  Shepp  v.  Jones,  35  Weekly  Notes  of 

though  most  of  the  separate  features  Cases    (Pa.)    29-1892,    is    a    similar 

of  plaintiff's  lock  were  open  to  pub-  case,  as  to  a  book  of  photographs, 
lie  use,  and  although  the  differences 


288  Unfair  Business  Competition. 

books,  with  covers  of  a  peculiar  style,  each  one  generally  con- 
taining a  single  favorite  poem,  and  these  books  became  well 
known  and  had  a  wide  sale.  They  were  not  copyrighted.  De- 
fendants then,  by  some  photographic  or  mechanical  process, 
copied  the  books  with  their  illustrations,  and  closely  imitated 
the  covers.  The  work  was  of  inferior  quality,  and  the  books 
were  sold  for  prices  much  lower  than  plaintiff's.  Held  to  be 
unfair  competition.  In  an  English  case,10  plaintiff  made  cigars 
with  bull-nosed  or  flattened  shape.  These  were  the  only  cigars 
of  this  style  sold.  Defendant  copied  the  shape  used  by  plain- 
tiff, but  contended  that  other  cigars  of  the  same  shape  were 
sold.  He  failed  to  prove  his  case.  The  court  said,  "  that  al- 
though defendant  is  selling  in  boxes  which  are  not  capable  of 
being  mistaken,  he  is  inclosing  in  the  box  a  cigar  which  is 
capable  of  being  mistaken  and  which  will  be,  on  the  evidence, 
likely  to  be  mistaken  when  it  is  taken  out  of  the  box.  He  might 
distinguish  his  goods  by  putting  bands  on  cigars  themselves." 
Injunction  granted. 

In  1890  the  United  States  Circuit  Court  in  Pennsylvania  de- 
cided that,  regardless  of  the  question  of  trade-mark,  a  manu- 
facturer who  bronzed  the  heads  of  his  nails  to  distinguish  them 
from  others,  was  entitled  to  restrain  others  from  bronzing 
theirs  in  the  same  manner.  "  Whether  this  is  of  itself  a  good 
trade-mark  or  not,  it  is  a  style  of  goods  adopted  by  the  com- 
plainants which  the  defendants  have  imitated  for  the  purpose 
of  deceiving,  and  have  deceived  the  public  thereby,  and  induced 
them  to  buy  their  goods  as  the  goods  of  the  complainants.  This 
is  fraud."  "  This  passage  is  quoted  with  favor  in  Lawrence 
Mfg.  Co.  v.  Tennessee  Mfg.  Co.12 

In  contrast  to  this  case,  and  as  showing  the  different  views 
which  have  been  taken  of  this  question,  it  is  interesting  to  note 
that,  within  a  year  of  the  decision  in  the  last-mentioned  case 
by  the  federal  court  in  Pennsylvania,  the  state  court  there  took 
the  opposite  view,  in  Putnam  Nail  Co.  v.  Dulaney.1*  In  this 
case,  plaintiff,  a  manufacturer  of  horse-shoe  nails,  had  adopted 

10  Elliott  &  Co.  v.  Hodgson,  19  R.  12 138   U.   S.   537-1891;    34  L.   ed. 

P.  C.  518-1902.  997;  11  Sup.  Ct.  396. 

''Putnam  Nail  Co.  v.  Bennett,  43  13 140   Pa.    St.   205-1891;   21   Atl. 

Fed.  800-1890.  391;  11  L.  R.  A.  524. 


Simulation  of  Articles  Themselves.  289 

the  method  of  bronzing  its  nails  in  order  to  distinguish  them  as 
being  of  its  manufacture.  No  other  manufacturer  had  made 
bronzed  nails,  and  the  bronzing  had  no  effect  on  the  quality  or 
usefulness  of  the  nails.  Plaintiff  sought  to  enjoin  defendant 
from  selling  a  precisely  similar  nail,  alleging  that  defendant 
bronzed  his  nails  in  order  to  pass  them  off  on  the  public  as  the 
plaintiff's.  The  imitation  of  plaintiff's  goods  by  defendant 
appears  to  have  been  limited  to  this  one  particular,  and  it  was 
decided  that  the  bronzing  could  not  constitute  a  trade-mark, 
and  that,  as  the  plaintiff's  process  was  not  patented,  defendant 
was  entitled  to  sell  nails  bronzed  like  those  of  plaintiff. 

Where  the  plaintiff  manufactured  zithers,  and  the  defendant 
made  similar  instruments  so  closely  resembling  plaintiff's  in 
outline,  arrangements  of  strings  and  other  peculiarities,  that 
it  was  manifest,  on  inspection,  that  there  had  been  a  deliberate 
copying  of  it  in  all  essential  and  many  nonessential  details, 
the  Massachusetts  court  has  held  that,  while  defendant  had  a 
right  so  to  imitate  plaintiff's  instrument,  he  should  be  required, 
before  offering  his  goods  for  sale,  to  mark  them  clearly  so  as 
to  indicate  unmistakably  that  they  are  the  defendant's  and  not 
the  plaintiff's  goods.14  This  decision  rests  on  a  somewhat  dif- 
ferent ground  from  Putnam  v.  Bennett  (supra).  The  one  holds 
it  fraud  to  copy  a  "  style  of  goods  "  with  fraudulent  intent. 
The  other  that  to  copy  is  quite  allowable,  but  that  it  is  fraud 
not  to  mark  the  goods  so  distinctly  as  to  avoid  confusion.  In 
the  zither  case  Holmes,  J.,  says  at  p.  91,  "  Both  zithers  are 
adapted  for  the  use  of  patented  sheets  of  music,  but  the  zithers 
are  not  patented.  Under  such  circumstances  the  defendant 
has  the  same  right  that  the  plaintiff  has  to  manufacture  instru- 
ments in  the  present  form,  to  imitate  the  arrangement  of  the 
plaintiff's  strings  or  the  shape  of  the  body.  In  the 
absence  of  a  patent,  the  freedom  of  the  manufacturer  can- 
not be  cut  down  under  the  name  of  preventing  unfair 
competition.  All  that  can  be  asked  for  is  that  precau- 
tions be  taken,  so  far  as  are  consistent  with  the  defend- 
ant's fundamental  right  to  make  and  sell  what  he  chooses, 
to    prevent    the    deception    which    no    doubt    he    desires    to 

"Flagg  Mfg.  Co.  v.  Holway,  178  Mass.  83-1901;  59  N.  E.  667. 
19 


290  Unfair  Business  Competition. 

practice.  It  is  true  that  a  defendant's  freedom  of  action  with 
regard  to  some  subsidiary  matter  of  ornament  or  label  may  be 
restrained,  although  a  right  of  the  same  nature  with  its  free- 
dom to  determine  the  shape  of  the  articles  which  it  sells.  But 
the  label  or  ornament  is  a  relatively  small  and  incidental  affair, 
which  would  not  exist  at  all,  or  at  least  would  not  exist  in  that 
shape  but  for  the  intent  to  deceive;  whereas  the  instrument 
sold  is  made  as  it  is  partly,  at  least,  because  of  a  supposed  or 
established  desire  of  the  public  for  instruments  in  that  form. 
The  defendant  has  the  right  to  get  the  benefit  of  that  desire, 
even  if  created  by  the  plaintiff.  The  only  thing  he  has  not  the 
right  to  steal  is  the  good-will  attaching  to  the  plaintiff's  per- 
sonality,—  the  benefit  of  the  public's  desire  to  have  goods  made 
by  the  plaintiff." 

The  point  of  difference  between  the  two  cases  just  referred 
to  is  made,  by  Judge  Holmes,  to  rest  on  the  fact  that  the  public 
has  a  desire  for  zithers  in  a  particular  form.  Anyone  may 
make  and  sell  goods  in  that  form  if  it  is  not  covered  by  patents. 
The  law  of  unfair  competition  cannot  give  to  one  dealer  the  sole 
right  to  use  that  form,  even  though  he  may  have  been  the  first 
one  to  make  zithers  in  that  manner.  This  would  be  an  instance 
of  secondary  meaning  which  attaches  to  a  process  or  form  of 
manufacture  and  not  to  a  person.  The  result  of  the  difference 
has  been  noticed  in  the  chapter  on  Geographic  Names,  in  re- 
ferring to  names  indicating  process.  It  is  this :  No  one  can 
obtain  the  sole  right  to  a  name  or  article  which  has  become 
attached  to  a  process;  but  one  may  acquire  valuable  and  dis- 
tinct rights  to  a  name  or  form  of  goods  which  has  become  asso- 
ciated with  his  personality.  The  first  maker  of  zithers  in  this 
particularly  desirable  style  may  have  created  a  desire  on  the 
part  of  the  public  for  one  of  two  things,  either  for  zithers  made 
by  him,  above  all  other  zither  makers,  or  for  zithers  made  in 
a  particular  form  regardless  of  who  makes  them.  The  law  of 
unfair  competition  is  interested  in  the  first  of  these  conditions 
—  the  one  attaching  to  the  personality.  But  the  fact  that  the 
demand  for  zithers  has  been  created  by  the  plaintiff  will  not 
put  the  case  within  the  unfair  competition  rules,  where  the  de- 
mand is  for  the  article,  not  the  personality. 


Simulation  of  Akticles  Themselves.  291 

Fox,15  the  complainant,  was  the  first  to  manufacture  a  par- 
ticular kind  of  bread,  using  in  it  milk  and  malt,  and  applied 
to  it  as  a  trade  name  the  word  "  Creamalt."  The  bread 
was  made  in  an  oval  loaf,  unusual  in  shape  and  size,  and  hav- 
ing a  peculiar  broken  and  glazed  surface,  so  as  to  pro- 
duce an  odd  visual  appearance.  This  combination  of  external 
characteristics  was  neither  economical  nor  necessary,  and 
nothing  similar  was  in  use  by  others.  Defendants  then  began 
to  make  similar  bread,  calling  it ' '  Crown  Malt, ' '  and  imitating, 
first,  the  form  of  the  loaf,  and  then  also,  with  a  slight  differ- 
ence, the  peculiar  appearance  of  the  surface,  and  a  label  re- 
sembling that  used  by  complainant  was  attached  to  the  loaf. 
A  band  was  put  around  the  loaf  by  both  plaintiff  and  defend- 
ant, the  former  calling  his  product  "  Fox's  Creamalt,"  the 
latter  naming  his  "  Hathaway 's  Log  Cabin  Bread."  This  band 
was  easily  removable  by  retail  dealers.  Knowlton,  C.  J.,  says : 
' '  The  plaintiff  had  no  exclusive  right  in  any  one  of  the  features 
of  the  combination,  and  if  the  defendants  had  required  the  use 
of  this  combination  for  the  successful  prosecution  of  their  busi- 
ness, they  would  have  had  a  right  to  use  it,  by  taking  such  pre- 
cautions as  would  prevent  deception  of  the  public  and  inter- 
ference with  the  plaintiff's  good-will.  But  the  evidence  shows 
that  the  defendants  had  no  occasion  to  use  this  combination,  and 
therefore  they  were  not  justified  in  producing  an  imitation  of 
the  plaintiff's  loaves,  the  natural  effect  of  which  would  be  to 
deprive  it  of  a  part  of  its  trade  through  deception  of  the  pub- 
lic. There  are  numberless  shapes  and  sizes  in  which  loaves  of 
bread  may  be  produced,  and  various  peculiarities  of  appear- 
ance in  color  and  condition  of  surface.  These  that  the  defend- 
ants adopted  had  been  combined  to  distinguish  the  plaintiff's 
Creamalt  bread,  and  it  was  the  duty  of  other  manufacturers 
to  recognize  this  fact.  Not,  indeed,  to  the  abandonment  of  their 
right  to  do  what  was  reasonably  necessary  to  success  in  the 
management  of  their  own  business,  but  to  the  extent  of  so 
conducting  their  business  as  not  unreasonably  and  unneces- 

15  Gsorge    G.    Fox    Co.    v.    Glynn,  Geo.  E.  Fox   Co.  v.  Hathaway,  199 

191  Mass.   344-1906;   78  N.  E.  89;  Mass.  99,  a  ease  of  a  similar  imita- 

9   L.   R.   A.   N.   S.   1096n;   later  re-  tion. 
port  85   N.   E.  417-1908.     See  also 


292  Unfair  Business  Competition. 

sarily  to  interfere  with  the  plaintiff's  business  through  decep- 
tion of  the  public." 

In  the  case  of  Rushmore  v.  Manhattan  Screw  and  Stamping 
Works15*  the  Circuit  Court  of  Appeals,  Second  Circuit,  car- 
ried the  doctrine  even  further  perhaps  than  does  the  Massa- 
chusetts case.  In  that  case,  the  complainant  in  the  use  of  the 
words  "  Flare  Front,"  applied  to  an  automobile  lamp,  ob- 
tained an  injunction  against  the  imitation  of  the  form  and  ap- 
pearance of  the  shell  inclosing  the  lamp,  although  it  conspicu- 
ously bore  the  distinctive  name  of  defendant.    The  court  said : 

' '  We  are  thus  confronted  with  the  naked  question  of  law  — 
can  one  who  manufactures  and  sells  a  well-known  article  of 
commerce,  like  an  automobile  searchlight,  inclosed  in  a  shell  of 
graceful  but  unpatented  design,  maintain  a  bill  for  an  injunc- 
tion, profits,  and  damages  against  a  defendant  who  sells  auto- 
mobile search  lights  inclosed  in  a  similar  shell,  with  his  name 
jprominently  appearing  thereon  as  the  maker,  and  who  has 
never  represented  that  his  lamps  were  made  by  the  complain- 
ant? We  feel  constrained  to  answer  this  question  in  the 
affirmative  upon  the  authority  of  Enterprise  Co.  v.  Landers, 
•  supra,  and  Yale  &  Toivne  Mfg.  Co.  v.  Alder.15b  Both  of  these 
cases  were  decided  by  this  court  and  we  see  no  way  to  dis- 
tinguish them  on  principle  from  the  case  at  bar.  We  are  of 
the  opinion,  however,  that  to  answer  this  question  in  favor  of 
the  complainant  carries  the  doctrine  of  unfair  competition  to 
its  utmost  limit.  If  it  be  pushed  much  further,  those  engaged 
in  trade  will  be  encouraged  to  run  to  the  courts  with  trivial 
complaints  over  the  petty  details  of  business  and  thus  will 
grow  up  a  judicial  paternalism  which  in  time  may  become 
intolerable." 

In  the  case  of  John  A.  Bauzhaf  v.  Edward  C.  Chased  the 
plaintiffs  made  "  Old  Homestead  Bread."  Defendant  put  on 
the  market  "  New  Homestead  "  bread,  the  words  being 
stamped  and  arranged  on  the  loaf  in  the  same  manner  as  that 
used  by  the  plaintiff.  The  bread  of  the  defendant  was  of  a 
character  to  be  mistaken  for  that  of  the  plaintiff.    Injunction 

"a  163  Fed.  939-1908,  C.  C.  A.  2d  Fogers   Co.,  N.  Y.  Law  Jour.  Feb. 

Cir.  27,  1909. 

,5b154  Fed.  37,  83  C.  C.  A.  149.  15ci50  Cal.  180-1907. 
See  also  Nathan  Mfg.  Co.  v.  H.  A. 


Simulation  of  Articles  Themselves.  293 

was  granted  on  ground  of  fraud.  The  plaintiff's  case  was 
held  to  rest  "  on  the  right  of  the  plaintiffs  to  restrain  the  con- 
duct of  the  defendant  whereby  he,  in  order  to  injure  the  plain- 
tiffs and  benefit  himself,  simulates  the  plaintiffs'  goods,  de- 
ceives the  plaintiffs'  patrons  into  the  belief  that  his  bread  is 
that  made  by  the  plaintiffs.  :  *  The  right  of  action  *  *  * 
arises  from  the  fraudulent  purpose  and  conduct  of  the  defend- 
ant and  the  injury  caused  to  the  plaintiffs  thereby,  and  it 
exists  independently  of  the  law  regulating  trade-marks.  *  *  * 
The  gist  of  such  an  action  is  not  the  appropriation  and  use 
of  another's  trade-mark,  but  the  fraudulent  injury  to,  and 
appropriation  of,  another's  trade." 

Shaw  v.  Pilling15a  was  an  action  of  trespass  for  infringement. 
Plaintiff,  with  the  aid  of  a  physician,  invented,  but  did  not 
patent,  an  atomizer,  which  he  called  the  "  Burgess  Atomizer,'* 
naming  it  from  his  partner.  Defendants  (and  other  parties  as 
well)  afterward  began  to  make  an  exactly  similar  atomizer, 
indorsing  it  in  a  similar  box,  with  a  label  containing  the  same 
cut  or  picture,  and  called  it  the  "  Burgess  Atomizer." 

Defendants  claimed  that  the  name  Burgess  had  come  to  be 
merely  descriptive,  not  denoting  a  particular  manufacturer, 
but  was  held  liable  for  damages. 

§  148.  Copying  a  Single  Feature  or  Part. —  The  rules  ap- 
plying to  imitation  of  a  complete  article  apply  equally  to  copy- 
ing a  single  salient  feature  or  part.  Where  a  complainant 
had  long  manufactured  stoves  and  ranges  with  white  enamel 
lining  on  the  inside  of  the  doors,  which  feature  distinguished 
these  stoves  to  the  eye  from  all  others,  and  they  were  often 
called  "  White  Enamel  "  stoves,  it  was  held  that  defendant  had 
no  right  to  use  similar  white  lining  for  the  inside  of  the  doors 
of  his  stoves,  with  intent  to  lead  the  public  to  suppose  his  goods 
to  be  those  of  complainant.16 

In  Geo.  Frost  Co.  v.  E.  B.  Estes  &  Sons}1  complainant  made 
a  hose  supporter,  the  distinctive  feature  of  which  was  a  rubber 
button  with  a  metal  rivet,  used  to  attach  the  hose  to  the  sup- 
porter.   The  use  of  a  rubber  button  for  this  purpose  was  pro- 

1M175  Pa.  St.  78-1896.  "156  Fed.  677-1907  (C.  C.  Mass.). 

"  Buck's  Stove  and  Range  Co.  v. 
Kiechle,  76  Fed.  758-1896  (Cir.  Ct. 
Ind.). 


294  Unfair  Business  Competition. 

tected  by  a  patent.  Defendant  manufactured  a  wooden  button, 
intended  to  be  used  with  a  metal  rivet,  colored  like  rubber,  and 
resembling  complainant's  button  in  appearance.  Hose  support- 
ers with  wooden  buttons  had  often  been  sold  for  those  with 
rubber  buttons,  and  sometimes  specifically  for  complainant's 
supporters;  but  defendant  himself  did  not  make  or  sell  sup- 
porters. Held,  that  defendant  made  the  buttons  for  the 
purpose  of  aiding  unfair  trade,  and  should  be  enjoined  from 
thus  contributing  to  the  wrong  done  the  complainant. 

§  149.  Making  Repair  Parts  for  Articles  Manufactured  by 
Others.—  These  cases  are  important,  for  much  injury  is  often 
done  to  manufacturers  by  other  dealers  putting  on  the  market 
parts  of  articles  made  by  these  manufacturers  for  purposes  of 
repair.  These  parts  must  of  necessity  be  exact  copies  in  form 
and  shape  of  the  original  parts ;  and  the  question  in  these  cases 
is,  what  constitutes  a  representation  that  these  repair  parts  are 
made  by  the  original  manufacturer? 

The  Enterprise  Manufacturing  Co.  had  for  many  years 
made  and  sold  meat  choppers  and  also  separate  repair  parts  to 
replace  parts  of  the  machine  that  were  damaged  or  worn  out. 
Many  of  these  parts  were  marked  with  the  compamr's  name. 
The  patents  on  them  had  expired.  Bender  made  repair  parts 
for  the  machine  of  the  same  shape  and  appearance  as  com- 
plainant's, and  these,  although  put  up  in  distinctive  packages, 
usually  reached  the  consumer  without  markings  indicating 
origin.  No  actual  deception  was  proved  and  the  court  held 
that  he  should  not  be  required  to  mark  the  parts  with  his 
name.18 

Where  an  employee  of  a  manufacturer  of  electric  batteries 
and  renewal  plates  learned  the  business  and  then  started  out 
on  his  own  account  and  manufactured  plates  similar  in  shape, 
size,  and  appearance  to  complainant's,  and  intended  to  be  used 
as  renewal  plates  for  complainant's  batteries,  he  was  re- 
strained from  selling  such  plates  without  conspicuously  stamp- 
ing them  with  his  name,  or  otherwise  clearly  distinguishing 
them  to  the  eye  from  complainant's  goods.19 

19  Bender  v.   Enterprise  Mfg.   Co.,  "Edison    Mfg.    Co.    v.    Gladstone, 

156   Fed.   641-1907    (C.   C.    A.   6th      —  N.  J.  Eq. ;  58  Atl.  391-1903. 

Cir.). 


Simulation  of  Articles  Themselves.  295 

It  is  not  unfair  to  use  the  name  of  a  well-known  article  in 
labeling  a  repair  part,  if  it  be  used  in  a  bona  fide  way  and 
simply  to  indicate  that  the  part  is  made  to  fit  that  article.20 

Magee  Furnace  Co.  v.  he  Baron21  holds  that  it  is  lawful  to 
make  and  sell  these  repair  parts  if  not  patented  and  that  the 
numerals  and  letters  used  by  the  maker  of  the  article  itself 
to  designate  these  parts  may  be  freely  used  by  him  who 
makes  only  the  parts,  as  they  are  not  a  part  of  the  mark  on  the 
article  itself  and  are  not  likely  to  mislead  when  considered 
alone.  The  Circuit  Court  of  Appeals  considers  this  case  of 
little  authority,  for  it  says  of  it:  "  The  opinion  *  *  *  was 
aimed  at  a  mere  question  of  fact,  that  is,  whether  the  letters  or 
numbers  used  on  certain  parts  of  stoves  were  any  part  of  the 
trade-mark  in  question."22 

In  Avery  v.  Meikle  &  Co.,23  the  defendants  purchased  plows 
made  by  the  plaintiffs,  dismantled  them,  and  then  copied  the 
parts  exactly,  and,  using  plaintiffs '  plows  as  patterns,  began  to 
make  plows  so  similar  to  plaintiffs'  that  no  ordinary  person 
could  tell  them  apart.  "  They  also  imitated  almost  to  per- 
fection the  interchangeable  metal  points  of  appellants'  plows  " 
(p.  82).  They  copied  all  the  following  marks  used  by  plaintiffs 
on  their  plows,  "A.  0.,"  "  B.  0.,"  "  C.  0.,"  "  VV  "  1,"  "  2," 
"  3,"  "  8,"  used  the  mark  "  P.  0."  in  place  of  "  Pony,"  and, 
like  plaintiffs,  placed  on  their  plows  the  words  "  Louisville," 
and  u  Keep  all  taps  screwed  up."  The  letters  used  were  the 
same  size  and  kind,  and  in  the  same  position  on  the  plows. 
The  varnishing  of  the  plows  was  the  same.  The  only  differ- 
ence between  the  goods  of  plaintiffs  and  those  of  the  defend- 
ants was  in  the  actual  trade-marks  used, —  each  party  putting 
on  its  goods  its  own  name  and  mark.  Soon  after  the 
defendants  put  on  the  market  the  plows  copied  from  the 
plaintiffs'  designs,  their  sales  increased  from  30  to  100  plows 
per  day.  They  sold  largely  to  jobbers,  and  put  on  their 
plows  so  sold,  not  their  own  name  and  mark,  but  the  name 
and  mark  of  the  jobber  to  whom  the  goods  were  sold.      Held, 

50  Wagner  Typewriter  Co.  v.  F.  S.  "  Le  Page  v.   Russia   Cement   Co., 

Webster  Co.,  144  Fed.  405-1906  (C.  51  Fed.  944-1892  (C.  C.  A.  1st  Cir.) ; 

C.  S.  D.  N.  Y.).  17  L.  R.  A.  354  et  seq. 

21 127  Mass.  115-1879.  M  81  Ky.  73-18S3. 


296  Unfair  Business  Competition. 

that  the  defendants  had  a  right  to  copy  the  plaintiffs' 
plows,  the  court  saying:  "  The  shape  and  construction  of 
the  plows  do  not  form  any  part  of  the  trade-mark  of  appel- 
lants." It  cited  Candec,  Swan  &  Co.  v.  Deere  $  Co.,2*  where 
the  Illinois  court  said:  " Anyone,  therefore,  has  a  perfect  right 
to  make  plows  in  their  exact  similitude,  even  to  the  '  curve  of 
the  mould-board  '  and  '  the  tip  of  the  handles  ' —  in  the  min- 
utest, as  well  as  in  the  most  important  parts  —  all  have  a  right 
to  manufacture  them  no  matter  where  the  maker  may  reside, 
and  has  the  right  to  put  the  name  of  the  place  where  manufac- 
tured as  well  as  his  own  name  on  such  parts  of  the  plows  as  he 
pleases,  taking  care,  however,  so  to  use  the  brand  as  not  to 
deceive  the  public,  so  as  not  to  create  a  belief  that  the  plow 
is  the  manufacture  of  another;"  and  citing  also  Fairbanks  v. 
Jacobus.25  li  The  only  thing  he  (defendant)  has  not  the  right 
to  steal  is  the  good-will  attached  to  the  plaintiff's  personality 
—  the  benefit  of  the  public's  desire  to  have  goods  made  by  the 
plaintiff."26 

The  opinion  in  the  Avery- case  continues  (p.  103)  :  "You 
cannot,  under  pretense  of  exercising  a  common  right  of  use, 
and  by  reason  of  the  fact  that  the  means  used  represent  the 
quality  and  size  of  your  goods,  so  use  them  that,  while  they 
perform  this  simple  and  innocent  purpose  apparently  of  repre- 
senting quality  and  size,  caution  and  description,  you  cause 
them  to  do  more  —  to  represent  your  goods  as  those  of  another, 
and  by  the  seeming  fairness  which  follows  the  selection  of  a 
legal  or  innocent  instrument  or  means,  escape  the  consequences 
of  an  illegal  use  thereof.  This  would  be  stealing  the  livery  of 
heaven  to  serve  the  devil  in. 

"  This  would  be  perverting  the  privileges  and  uses  of  our 
language,  under  the  pretense  of  describing  one's  own,  to  take 
another's  from  him.  Can  such  illegal  use  be  made  of  written  or 
oral  language,  because  it  is  no  harm  to  use  that  language  about 
matters  not  foreign  to  its  objects? 

14  54  111.  439^61-1870.  on  this  point  Cooke  &   Cobb   Co.  v. 

25 14  Blatchf.  337.  Miller,  169  N.  Y.  475-1902;  62  N. 

28  Flagg  v.  Holway,  178  Mass.  83-  E.  582. 
91-1901 ;  59  N.  E.  667.     See  further 


Simulation  of  Articles  Themselves.  297 

"  Quality,  size,  description,  caution,  elements,  etc.,  may  be 
indicated  or  named  by  the  use  of  the  words,  letters,  and  nu- 
merals described  above.  This  is  the  appellees'  right;  but  it  is 
not  because  the  words,  letters,  and  figures  do  that,  that  he  is 
complained  of,  for  he  has  the  right  to  use  them  for  those  pur- 
poses. But  the  complaint  is,  that  these  letters  and  figures  have 
been  used  not  to  do  this  alone  which  was  rightful,  but  they 
have  been  used  for  an  ulterior  purpose. 

"  The  appellees  selected  the  same  letters,  the  same  words, 
the  same  numerals,  and  put  them  in  the  same  colors,  and 
upon  the  same  places  on  their  plows,  as  were  used  by 
appellants  on  their  plows.  For  what?  To  represent  quality 
and  size  alone!  Who  could  believe  it!  Why  not  take  type 
from  a  different  font?  Why  not  take  other  numerals  that 
would  serve  the  same  purpose  better?  Why  adopt  as  a 
number  "  V2,"  "  1,"  "2,"  "3,"  "  8  "?  Why  "A.O.," 
' '  B.  0., "  '  <  C.  0., "  ' '  P.  0. "  ?  No  answer  can  be  given,  except 
that  a  man  intends  the  natural  consequences  of  his  own  act; 
and  the  consequences  of  this  act  are  to  take  appellants' 
trade,  built  up  on  his  reputation,  and  transfer  it  to  appellees, 
by  using  that  reputation  to  sell  appellees'  plows.  *  *  * 
Would  they  take  to  pieces  one  of  appellants'  plows,  then 
make  theirs  like  it,  brand  them  at  the  same  points  and  in  the 
same  way,  paint  them  alike,  make  the  same  interchangeable 
metal  points,  abandon  their  old  lettering,  and  adopt  the  letters 
and  numerals  of  appellants,  if  they  were  making  a  better  plow, 
and  thus  run  the  risk  of  confusion  with  inferior  plows?  Who 
would  thus  dig  a  ditch  to  fall  into  himself?  The  eyes  of  capital, 
trade,  and  commerce  are  too  keen  not  to  see  and  avoid  such 
folly.  No  man  in  his  senses  would  commit  it,  and  we  cannot  be- 
lieve the  appellees  did  so.  If  they  did  not,  then  the  reason  as- 
signed by  them  for  this  elaborate  imitation  is  false,  and  we 
must  look  for  another  and  true  reason,  which  may  be  easily 
found,  for  it  lies  upon  the  surface  —  it  is  pointed  out  by  the  ex- 
perience of  the  race.  Those  letters  and  figures  on  the  skillful 
imitations,  unless  we  deny  the  evidence  of  our  senses,  the  plows 
having  been  exhibited  to  us,  were  used  to  enable  appellees  to 
sell  their  plows  as  and  for  those  of  the  appellants,  and  thereby 


298  Unfair  Business  Competition. 

injure  their  trade  reputation,  lessen  their  sales,  and  share  their 
profits  and  customers. 

"  The  question  must  not  be  confined  to  what  the  appellees 
used,  but  how  and  for  what  purpose  they  used  the  indicia 
copied  from  appellants'  plows. 

"  If  so  restricted,  the  case  is  plain,  for  what  they  used  they 
had  the  right  to  use,  but  the  manner  in  which  they  used  these 
letters  and  figures  constitutes  the  wrong.  They  have  used  law- 
ful things  in  an  illegal  way.  Instead  of  using  them  to  desig- 
nate quality  and  size  merely,  which  is  allowable,  they  did  not 
content  themselves,  but,  under  the  pretense  of  designating 
quality  and  size,  which  the  letters  and  figures  really  do,  they 
pressed  them  into  another  service,  by  placing  them  at  points 
and  in  positions  on  their  plows  that  corresponded  with  the 
manner  of  their  use  by  appellants.  For  this  reason  the  appel- 
lants' trade-mark  could  not  perform  its  legitimate  functions; 
its  power  of  designating  their  make  of  plows  was  lessened,  and 
to  that  extent  their  trade  coming  to  them  from  their  reputation, 
as  evidenced  by  their  trade-mark,  was  destroyed,  and  the  way 
opened  for  appellees  to  claim  that  loss  as  their  gain,  thus 
usurping  the  trade  reputation  of  appellants  by  the  artful  man- 
ner of  using  and  combining  artificial  signs  common  to  all  as  sig- 
nifying quality  and  number  generally." 

The  right  to  copy  parts  of  machines  is  considered  in  Deering 
Harvester  Co.  v.  Whitman  &  Barnes  Co.26a  Also  the  right  to 
use  letters  and  figures  used  by  the  plaintiff  on  such  parts;  and 
it  was  held  that  there  was  no  trade-mark  rights  in  these  marks, 
that  any  office  of  designating  source  which  these  marks  per- 
form is  accidental,  that  it  is  open  to  all  persons  to  make  these 
parts  of  the  plaintiffs  machine. 

In  this  connection  the  case  of  Richards  v.  Williamson2®3  is 
interesting.  This  case  speaks  of  misuse  of  parts  of  a  gun  as 
unfair  trade  (p.  749). 

§  150.  Copying  Articles  on  Which  Patents  Have  Expired. 
—  Owners  of  a  patented  article  have  an  absolute  monopoly  of 
the  right  to  make  and  sell  that  article  during  the  life  of  the 
patent,  and  in  this  period  no  one  may  copy  it.    The  absolute 

268  91  Fed.  376-1898.  2,b  30  L.  T.  Rep.  746-1874. 


Simulation  of  Articles  Themselves.  299 

property  of  the  patentee  in  it  gives  him  the  right  to  demand  its 
protection.  But  when  the  patent  expires,  a  competitor  may 
copy  the  article  in  every  detail  without  interference  as  to  the 
mere  copying.  Here  the  law  of  unfair  competition  steps  in, 
and  forbids  the  marketing  of  the  goods  made  by  others  than 
the  patentee,  in  any  manner  which  will  pass  off  their  article  as 
that  of  those  who  made  it  under  the  patent.  The  public 
learned  to  know  the  "  Singer  "  sewing  machine  from  the  ma- 
chine made  by  the  patentees.  They  were  entitled,  on  the  ex- 
piration of  the  patent,  to  all  of  the  good-will  and  reputation 
which  had  been  created  though  the  merits  of  that  machine  as 
made  by  them,  despite  the  fact  that  the  design  was  now  public 
jiroperty.  In  other  words,  there  is  now  a  difference  between 
a  Singer  machine,  viz.,  one  made  according  to  Singer's  patents, 
and  a  machine  made  by  the  company  which  made  the  machines 
under  the  patents. 

The  fact  that  the  frame  of  a  peculiar  shape  was  an  important 
feature  of  a  patented  sewing-machine  did  not,  upon  the  expira- 
tion of  the  patent,  give  to  the  patentees  any  exclusive  right  to 
use  a  frame  of  that  shape,  on  the  ground  that  the  manufac- 
turer's goods  had  come  to  be  known  and  identified  by  the  pub- 
lic by  that  peculiarly  shaped  frame.27 

While  upon  the  expiration  of  a  patent,  the  name  by  which 
the  article  has  come  to  be  known  is  open  to  general  use,  this 
cannot  be  claimed  as  to  the  form  of  dress,  such  as  a  wrapper  of 
peculiar  design  by  which  the  article  has  been  known  to  the  pub- 
lic.28 These  features  have  nothing  to  do  with  the  patent  rights, 
and  are  property  of  the  patentee.  As  to  them  the  general 
rules  as  to  dress  apply,  for  which  see  the  next  chapter.  He 
who  makes  use  of  the  design  of  an  expired  patent  must  limit 
himself  to  that  design  or  device;  he  must  not  adopt  its  other 
features  and  so  cause  confusion. 

In  Scriven  v.  North,20  Jeremiah  A.  Scriven  began,  in  1884, 
the  manufacture  of  a  new  style  of  men's  drawers,  the  body 

"Wilcox  &  Gibbs  Sewing  Machine  M  134  Fed.  366-1901  (C.  C.  A.  4th 

Co.  v.   The  Gibbens  Frame,  17  Fed.  Cir.)  ;  67  C.  C.  A.  348;  s.  c.  modi- 

023-1883  (C.  C.  S.  D.  N.  Y.).  fying    124    Fed.    894-1903    (C.    C. 

m  Centaur   Co.   v.  Killenberger,  87  Md.).     See  also  Rice-Stix  v.  Scrivin, 

Fed.  725.  165  Fed.  639-1909. 


300  Unfair  Business  Competition. 

portion  of  which  was  of  white  jeans,  with  longitudinal  in- 
sertions of  elastic  knitted  fabric  inside  and  outside  of  the 
legs,  and  at  the  back.  Until  that  time  drawers  were  all 
made  of  a  uniform  color,  and  in  order  to  make  his 
garments  distinctive,  Scriven  had  the  body  portion  of  his 
garments  made  white  and  the  elastic  insertions  yellow  or 
buff.  The  selection  of  this  buff  color  was  deliberate, 
and  for  the  purpose  of  making  it  conspicuous  and  different 
from  other  similar  garments.  He  gave  these  drawers  the  name 
of  "  Elastic  Seam,"  and  the  distinguishing  number  "  50,"  both 
the  words  and  the  number  being  stamped  upon  the  drawers. 
His  goods  were  made  under  patents,  and  known  as  the  "  Scri- 
ven Drawers. ' '  At  the  expiration  of  the  patent,  the  defendants 
and  others  began  to  market  goods  of  a  similar  type,  but  inferior 
in  quality  and  cheaper,  making  no  attempt  to  conceal  the  fact 
that  they  deliberately  made  their  goods  very  similar  to  those 
the  plaintiffs  had  made  under  their  patent.  The  plaintiffs  had 
marked  their  goods  for  some  time  with  an  oval  stamp  made  up 
of  the  words,  "  Scriven 's  Elastic  Seam  "  in  a  semi-circle  with 
three  straight  printed  lines  below  and  the  number  ' '  50. "  The 
defendants  put  upon  their  goods  an  oval  stamp  reading  as  fol- 
lows: "  Standard  Stretchy  Seam,"  with  three  lines  printed  be- 
low, and  the  number  "  50."  The  stamps  closely  resembled  each 
other.  When  plaintiffs'  goods  were  first  put  on  the  market, 
these  words  were  stamped  in  straight  lines,  the  defendants 
also  stamping  theirs  in  straight  lines,  and  when  the  plaintiffs 
adopted  the  oval  stamp,  the  defendants  did  likewise.  The 
plaintiffs'  goods  had  two  distinctions:  (1)  The  buff-colored  in- 
sertion in  the  legs,  which  made  them  unique,  for  before  they 
began  manufacturing  them,  nothing  of  the  kind  was  known. 
(2)  The  name  "  Elastic  Seam,"  a  fanciful  designation  identi- 
fied with  the  plaintiffs'  goods.  The  defendants  first  adopted  a 
straight  stamp,  and  afterward,  when  complainants  began  to 
use  an  oval  stamp,  followed  them  by  adopting  a  stamp  of  like 
shape,  with  lettering  and  lines  so  arranged  as  would  be  likely 
to  mislead  the  careless  observer.  The  words  "  Stretchy 
Seam  "  are  intended  to  convey  to  the  mind  of  the  purchaser 
precisely  the  same  idea  as  is  conveyed  by  the  words  "  Elastic 
Seam,"   words   not   subject   to   an   exclusive    appropriation. 


Simulation  of  Articles  Themselves.  301 

The  opinion  of  the  court  was  that  the  defendants  adopted 
and  applied  the  name  "  Stretchy  Seam  "  to  their  garments  for 
the  purpose  of  imitating  the  name  which  had  been  adopted  by 
the  plaintiffs. 

In  Westcott  Chuck  Co.  v.  Oneida  Nat.  Chuck  Co.,30  defend- 
ant exactly  duplicated  the  drill  chucks  made  by  plaintiff,  after 
the  expiration  of  its  patents,  and  stamped  them  with  the  same 
series  of  numbers  used  by  plaintiff  to  denote  sizes,  and  also 
with  the  same  words  "  Keep  well  oiled,"  used  by  plaintiff. 
Defendant  placed  its  own  name  on  the  articles,  and  did  not  use 
certain  words  ("  Little  Giant,"  etc.),  used  by  plaintiff  to  desig- 
nate type  or  style.  The  appellate  court,  while  reversing  a  judg- 
ment, awarded  a  sweeping  injunction,  intimating  that  it  might 
be  proper  to  restrain  defendant  from  using  the  same  numerals 
adopted  by  plaintiff  to  denote  sizes,  although  the  exact  copying 
of  the  form  and  appearance  of  the  goods  themselves  could  not 
be  interfered  with.30a 

After  the  expiration  of  the  patent  on  "  Castoria,"  and  the 
word  became  public  property,  the  owners  spent  more  than 
$100,000  a  year  in  advertising  the  name.  The  defendant  put 
out  a  remedy  called  "  Castoria  "  in  a  bottle  and  wrapper 
similar  to  that  of  the  plaintiffs.  The  court  considered  that  pur- 
chasers, not  aware  of  the  fact  that  other  manufacturers  were 
making  "  Castoria,"  were  being  deceived;  that  persons  using 
such  an  article  are  not  familiar  with  printed  matter  upon  them 
but  recognize  them  by  the  size,  general  appearance,  and  pos- 
sibly the  most  strikingly  displayed  words  on  the  wrapper ;  that 
it  was  the  duty  of  the  defendant  to  make  clear  to  the  purchaser 
that  its  remedy  was  not  that  manufactured  by  the  complainant 
under  the  name  "  Castoria."31 

"  The  presence  of  an  inequitable  purpose  is  necessarily  an 
element  of  great  weight  in  the  determination  of  a  question  of 
fairness  in  trade.  And  where  another  avails  himself  of  the 
principle  of  public  dedication,  he  must  in  good  faith  fully  iden- 
tify his  production,  and  clearly  dissociate  his  work  from  the 
work  of  the  one  who  has  given  significance  to  the  name,  and 

80 122  App.  Div.  (N.  Y.)  260.  *  Centaur   Co.  v.   Link,   62   N.   J- 

80a  Nathan  Mfg.  Co.  v.  Rogers  Co.,      Eq.  147-1901 ;  49  Atl.  828. 
N.  Y.  L.  Jour.,  Feb.  27,  1909.    Mon- 
itor injectors. 


302 


Unfair  Business  Competition. 


sufficiently  direct  the  mind  of  the  trading  public  to  the  fact 
that,  though  the  thing  is  of  the  same  name,  that  it  is  something 
produced  and  put  upon  the  market  by  himself."32 

Purchase  of  a  patented  article  from  the  inventor  or  his 
grantees,  carries  with  it  the  right  to  lawfully  use  the  in- 
ventor's name  to  describe  them. 


2  G.  &  C.  Merriam  Co.  v.  Ogilvie, 
159  Fed.  638-1908  (C.  C.  A.  1st  Cir.) 
[modifying  149  Fed.  858].  After  the 
copyright  on  earlier  editions  of  "Web- 
ster's Dictionary',  published  by  the 
Merriam  Co.,  had  expired,  defendant 
published  an  edition  under  the  name 
of  "Webster's  Imperial  (a  univer- 
sal) Dictionary;"  the  Merriam  Co.'s 
later  edition  being  entitled  "  Web- 
ster's International  Dictionary." 
Defendant  placed  his  own  name 
as  publisher  on  the  title  page  and 
the  back,  but  used  at  the  same  time 
such  titles  and  phrases  as  "  The 
latest  complete  authentic  Webster's 
Dictionary,"  with  a  reference  to 
supplementary  matter  contributed 
by  Noah  Porter  to  later  Merriam 
editions.  The  court  below  had 
condemned  certain  misleading  cir- 
culars issued  by  defendant,  but 
had  permitted  the  use  of  the  words 
used  on  title  page  and  back,  on  the 
ground  that  the  addition  of  defend- 
ant's name  as  publisher  sufficiently 
notified  tbe  public  that  the  book  was 
not  that  published  by  the  Merriams; 
it  at  the  same  time  enjoined  the  Mer- 
riams from  representing  that  they 
were  exclusively  entitled  to  the  name 
"  Webster's  Dictionary."  On  appeal, 
the  injunctive  relief  already  awarded 
was  sustained,  but  was  extended  so 
as  to  condemn  the  title  pages  and 
backs  then  used  by  defendant,  it  be- 
ing considered  that  the  words  used 
were  misleading,  in  spite  of  the  use 


To  allow  a  restraining  of 


of  defendant's  name.  Merriam  v. 
Famous  Shoe  &  Clothing  Co.,  47 
Fed.  411-1891  (C.  C.  E.  D.  Mo.), 
as  to  copying  book  after  copyright 
had  expired;  and  Merriam  v.  Texas 
Sif tings  Pub.  Co.,  49  Fed.  44-1S92 
(C.  C.  S.  D.  N.  Y.).  Sternberg  Mfg. 
Co.  v.  Miller  &  Co.,  161  Fed.  318- 
1908  (C.  C.  A.,  8th  Cir.)  reversing 
C.  C.  Complainant  patented  a  cigar 
mold,  the  chief  merit  of  which  was 
its  increased  strength  from  the  grain 
of  the  wood  running  up  and  clown, 
and  this  became  generally  known  as 
"Vertical  Top."  Held,  that  upon 
the  expiration  of  the  patent  rival 
makers  were  entitled  to  use  this 
n?me,  indicating  at  the  same  time 
the  difference  of  origin.  Defendant, 
however,  was  found  to  be  using  in 
its  catalogues  and  circulars  a  series 
of  figures  of  tools,  etc.,  deceptively 
similar  to  those  used  in  complain- 
ant's, and  was  required  to  indicate 
more  clearly  to  the  public  that  the 
goods  advertised  were  not  of  com- 
plainant's manufacture.  The  appel- 
late court  directed  that  the  defendant 
be  enjoined  "  from  manufacturing 
and  placing  upon  the  market  the 
'  Vertical  Top  '  cigar  mold,  without 
plainly  stamping  thereon,  or  other- 
wise plainly  indicating,  the  name  of 
the  defendant  as  the  manufacturer 
thereof,  and  also  from  copying  or  re- 
producing, in  its  published  cata- 
logues, circulars,  or  other  printed 
advertising    matter,    the    cuts     and 


Simulation  of  Articles  Themselves.  303 

such  a  use  might  lead  to  an  indefinite  extension  of  the  benefits 
of  patent  statutes.3211 

The  ease  of  Greene,  Tweed  &  Co.  v.  Mfrs.  Belt  Hook  Co.33 
would  seem  of  doubtful  authority,  as  giving  too  much  weight 
to  the  generic  character  acquired  by  the  article  during  the 
life  of  the  patent  and  disregarding  the  rights  of  the  complain- 
ant.    Complainant  and  its  predecessor  had  long  sold  vari- 
ous belt  fasteners  or  studs,  including  a  patented  article  known 
as  the  "  Blake  Stud  "  or  "  Blake  Belt  Stud."    Upon  the  ex- 
piration of  the  principal  patent  defendant  put  on  the  market  an 
article  of  the  same  type  or  design  as  the  "  Blake  Stud,"  though 
without  some  of  its  recent  improvements  in  detail.    Held,  that 
defendant  was  at  liberty  to  apply  to  it  the  name  "  Blake  Stud," 
on  the  ground  that  this  had  become  descriptive  of  the  article, 
and  also  to  imitate  complainant  in  stamping  two  stars  on  the 
fastener  head,  one  on  each  side  of  the  name.    (It  did  not  appear 
that  complainant  stamped  these  stars  upon  all  its  fasteners.) 
Preliminary   injunction   denied.      Said   the   court:     "If   the 
stud  was  always  so  marked  by  the  manufacturers  while  they 
had  a  monopoly  thereof,  it  may  well  be  claimed  now  that  the 
distinctive  ear-marks  which  entered  into  its  trade  success  also 
became  public. ' ' 34 

§  151.  Copying  the  Color  of  Goods.— Color  as  put  upon 
goods  themselves  may  be  considered  sometimes  as  dress,  some- 
times as  a  part  of  the  article  itself.  Where  two  dealers  put  out 
matches  which  were  colored  in  the  same  way,  the  court  said  if 
two  colors  there  used  could  be  appropriated,  other  colors  also 
could  be  appropriated  for  other  matches,  and  a  monopoly  of 
the  trade  would  result.35 

figures  of  tools,  implements  and  ma-  OT  158  Fed.  640-1906   (C.  C.  111.). 

chinery   produced   and   published  by  u  Citing  Singer  Mfg.   Co.  v.  June' 

complainant  connected  with  its  trade,  M.  Co.,  163  U.  S.  169;  and  Curtain 

without    distinctly    indicating    there  Co.  v.  Heinsfurter,  84  Fed.  955. 

with,  so  as  to  reasonably  advise  the  "Diamond  Match  Co.  v.  Saginaw 

public,  the  fact  that  the  same  are  of  Match   Co.,   142  Fed.   727-1906    (C. 

the  manufacture  and  use  of  the  de-  C.  A.  6th  Cir.). 
fendant." 


82a 


'Edison  v.  Mills-IB disonia   (N.  J. 
Ch.),  70  Atl.  191-1908. 


304  Unfair  Business  Competition. 

In  a  recent  case  coming  before  the  United  States  Supreme 
Court,  as  a  statutory  trade-mark  case,  the  court  declined  to 
express  any  opinion  as  to  how  it  would  have  dealt  with  the 
case  if  presented  on  the  broad  basis  of  unfair  competition,  but 
was  of  the  opinion  that,  in  the  case  before  it,  there  could  be  no 
trade-mark  in  the  device  of  painting  one  strand  of  wire  rope  a 
distinctive  color,  no  particular  color  being  specified,  remarking 
that  no  authority  exists  for  recognizing  mere  color,  not  con- 
nected with  a  particular  design,  as  a  trade-mark.3a  In  Scriven 
v.  North,  supra,37  the  use  of  similar  colors  is  made  a  question 
of  good  faith.  Said  the  court :  "  We  do  not  think  that  it  would 
be  proper  to  forbid  by  injunction  the  use  of  a  like  color  of  in- 
sertion (of  a  colored  strip  in  underwear),  if  that  was  the  nat- 
ural color  of  the  material  used ;  *  *  *  but  the  use  of  an  in- 
ferior material  dyed  to  imitate  the  color  adopted  by  the 
complainants  ought  clearly  to  be  forbidden,  for  this  color  was 
originally  selected  by  the  complainants  for  the  pui^ose  of  dis- 
tinguishing their  goods,  and  the  use  of  inferior  material,  dyed 
to  imitate  it,  could  have  no  other  purpose  than  to  mislead  the 
public,  accustomed  to  distinctive  characteristics  of  the  com- 
plainants' garments,  into  buying  an  inferior  article." 

The  Circuit  Court  in  Maryland  has  refused  to  follow  this 
rule,38  and  after  a  full  discussion,  held  that  there  was  no  unfair 
competition  in  using  a  buff-colored  longitudinal  strip,  re- 
sembling complainant's,  it  appearing  that,  although  the  natural 
color  of  the  American  cotton  used  by  defendant  was  not  buff, 
like  that  of  the  Egyptian  cotton  used  by  complainant,  it  was 
common  in  trade  to  bleach  it  white  or  dye  it  buff,  since  the 
natural  color  was  unpleasing  to  the  eyes. 

38  Leschen    &    Sons    Rope    Co.    v.  "  J.  A.  Scriven  Co.  v.  Morris,  154 

Broderick  &  Bascom  Rope  Co.,  201      Fed.  914-1907;  affirmed  in  158  Fed. 
U.  S.  166-1906;  30  L.  ed.  710;  26      1020. 
Sup.  Ct.  425. 

37 134  Fed.  366-73-1904  (C.  C.  A. 
4th  Cir.). 


CHAPTER  XII. 

Dress  or   Get-up  of   Goods,  Including   Labels,   Wrappers. 
Bottles,  Cartons,  Etc. 

Section  152.  Labels  which  are  not  strictly  trade-marks  are  protected. 

153.  Degree  of  similarity  calculated  to  deceive. 

154.  Mere  diversity  of  color  not  a  controlling  feature. 

155.  Imitation  of  a  single  feature  such  as  color,  form,  etc. 

156.  A  collocation  of  features  which  singly  might  be  copied  is  unfair. 

157.  Resemblance  in  several  features  may  be  fair  if  these  features 

are  common  to  the  trade. 

158.  Remarks  as  to  classification  of  the  following  cases  of  simulation 

in  dress  or  general  get-up. 

159.  Designs,  devices  and  figures. 

160.  Signatures  and  initials. 

161.  Reading  matter  on  labels. 

162.  Misleading  use  of  a  label  proper  in  itself. 

163.  Tobacco  tags,  cigar  bands,  etc. 

164.  Wrappers,  cartons,  etc. 

165.  Copying  bottles  used  by  competitor. 

166.  Refilling  containers  that  have  been  once  used. 

167.  Substitution  and  selling  of  inferior  goods  in  dress  of  goods  of 

a  higher  gTade. 

168.  Get-up  of  wagons,  buildings,  etc. 

169.  Labels. 

170.  Labels  not  registered  or  copyrighted  are  protected. 

171.  Features  of  an  action  as  to  label. 

172.  Kinds  of  labels. 

173.  Classification  of  label  cases. 

I.  Simulation  of  labels  in  which  a  name  is  the  principal 
feature. 

II.  Cases  involving  label  in  which  the  salient  feature  is  a  de- 

vice or  catch  word,  which  is  copied  or  simulated. 

III.  Cases  in  which  there  is  no  salient  feature  but  the  whole 

get-up  including  the  name  is  unfair. 

IV.  Cases  involving  a  general  resemblance  and  also  a  likeness 

in  the  name  used  in  which  relief  was  denied. 
V.  Cases  involving  no  similarity  in  name  but  a  resemblance  in 

general  appearance  amounting  to  unfair  competition. 
VI.  Cases  not  involving  names,  in  which  the  general  likeness 
in  get-up  is  not  close  enough  to  be  unfair. 

20  E305] 


306  Unfair  Business  Competition. 

The  growth  of  the  doctrine  of  the  law  of  unfair  competition 
can  be  clearly  traced  in  studying  cases  relating  to  the  general 
appearance  of  goods  when  placed  on  the  market.  As  recently 
as  1890,  Mr.  High,  in  his  well-known  book  on  Injunctions,  said 
(§  1076)  :  "  There  can  be  no  trade-mark  in  the  exterior  form 
or  color  of  the  article,  and  hence  no  injunction  to  protect  the 
plaintiff  in  the  manufacture  of  an  article  of  a  peculiar  form 
or  color.  So  a  package  or  barrel  cannot  by  reason  of  its 
peculiar  form,  dimensions,  or  shape,  independent  of  any 
symbol,  figure,  or  device  impressed  upon  or  connected  with  it, 
constitute  a  trade-mark,  and  will  not  be  protected  'by  injunc- 
tion." It  is  true,  as  Mr.  High  states,  that  no  trade-mark  can 
be  had  in  color,  form,  dimension,  or  shape.  It  is  no  longer  true 
that  injunction  will  never  issue  to  protect  a  trader  who  has 
acquired  a  particular  interest  or  property  in  a  color  used  in 
relation  to  his  goods,  or  in  the  size,  shape,  or  form  in  which  he 
puts  them  up.  It  has  become  a  recognized  fact  that  severe  loss 
to  him  and  confusion  on  the  part  of  the  public  may  arise 
because  of  the  imitation  of  some  one  or  more  of  these  features 
of  goods,  with  or  without  the  intent  to  filch  away  the  trade  of 
the  person  who  uses  them. 

§  152.  Labels  Which  Are  not  Strictly  Trade-marks  Are 
Protected. — It  was  once  the  tendency  of  courts  to  treat  all 
labels  as  technical  trade-marks;  but  it  has  been  found  that 
many  labels  do  not  meet  the  requirements  usually  mentioned 
in  defining  a  trade-mark,  viz.:  Must  (1)  point  out  the  origin 
or  ownership  of  the  article;  (2)  be  affixed  to  a  commercial 
article,  and  (3)  be  of  such  a  nature  as  to  be  capable  of  exclu- 
sive appropriation  by  one  person.  Such  labels  are  neverthe- 
less under  the  protection  of  the  law  of  unfair  competition,  and 
the  unscrupulous  trader  who  seeks  to  use  them  to  the  injury 
of  their  owner,  will  be  enjoined. 

There  are  vast  numbers  of  labels  in  this  category,  and 
that  protection  is  as  adequate  in  many  ways  as  that  which 
technical  trade-marks  receive,  although  not  entirely  based  on 
the  same  principles.  In  Wirtz  v.  Eagle  Bottling  Co.,1  com- 
plainant bottled  beer  and  sold  it  at  wholesale.  He  invented 
three  labels  which  he  put  upon  his  goods.     These  the  de- 

1 50  X.  J.  Eq.  164-6-1S92 ;  24  Atl.  658. 


Dress  or  Get-up  of  Goods.  307 

fendant  imitated.  Said  the  court:  "  His  liquors  are  known 
to  the  public  by  these  labels.  They  are  the  sign  or  symbol  by 
which  his  liquors  are  known  in  the  market.  If  we  speak  with 
accuracy,  these  labels  cannot  be  called  trade-marks,  but  they 
serve  substantially  the  same  purpose.  They  are  the  marks  by 
which  the  complainant's  goods  are  distinguished  in  the  market 
from  all  like  goods  put  upon  the  market  by  other  persons,  and 
are,  for  that  reason,  according  to  many  decisions,  just  as  much 
under  the  protection  of  the  law  as  are  trade-marks.  The  law 
protects  them  for  the  same  reasons  and  in  precisely  the  same 
way  that  it  does  trade-marks.  The  leading  principle  of  the  law 
on  this  subject  is,  that  no  man  shall  be  permitted  to  sell  his 
goods  on  the  reputation  which  another  dealer  has  established 
in  the  market  for  his  goods,  and  this  principle  applies  with 
equal  force  to  the  case  where  the  goods  of  such  dealers  are 
known  in  the  market  by  a  label,  as  it  does  to  the  case  where 
they  are  known  by  a  mark  which  is  strictly  a  trade-mark." 

§  153.  Degree  of  Similarity  Calculated  to  Deceive. —  It  is 
hardly  necessary  to  restate  here  the  familiar  rule,  applicable  to 
trade-marks  and  all  forms  of  competition,  that  the  defendant's 
mark  may  not  only  not  be  an  exact  copy  of  that  of  the  plaintiff, 
but  that  there  may  be  many  differences  between  the  two  labels 
or  forms  of  dress,  and  yet  a  deceptive  resemblance  may  exist. 
The  question  is,  not  whether  the  two  articles  are  readily  dis- 
tinguishable when  set  side  by  side,  but  whether  the  general  im- 
pression made  by  defendant's  article  upon  the  eye  of  a  casual 
purchaser  who  is  unsuspicious  and  off  his  guard,  is  such  as  to 
be  likely  to  result  in  his  confounding  it  with  the  original  ar- 
ticle. The  rule  as  to  what  amounts  to  simulation  in  unfair  com- 
petition may  be  stated  in  the  same  language  applied  to  trade- 
marks generally  in  Amoskeag  Mfg.  Co.  v.  Spear.2  "  It  is  evi- 
dent, however,  that  in  order  to  convey  a  false  impression  to  the 
mind  of  the  public  as  to  the  true  origin  or  manufacture  of 
goods,  it  is  not  necessary  that  the  imitation  of  an  original 
trade-mark  shall  be  exact  or  perfect.  It  may  be  limited  and 
partial.  It  may  embrace  variations  that  a  comparison  with  the 
original  would  instantly  disclose,  yet  a  resemblance  may  still 
exist  that  was  designed  to  mislead  the  public,  and  the  effect 

sSaoidf.   (N.  Y.)   599-06-1849. 


308  Unfair  Business  Competition. 

intended  may  have  been  produced;  nor  can  it  be  doubted  that 
whenever  this  design  is  apparent,  and  this  effect  has  followed, 
an  injunction  may  rightfully  be  issued,  and  ought  to  be  is- 
sued."   See  chapter  on  Similarity. 

An  injunction  on  ground  of  deceit  from  mere  similarity  of 
appearance  will  not  issue  in  doubtful  cases  and  where  there  is 
no  real  evidence  of  actual  deceit  having  been  caused.2a 

§  154.  Mere  Diversity  of  Color,  not  a  Controlling  Feature. — 
— A  difference  in  the  color  of  a  label  or  wrapper  may  be  un- 
important where  there  is  close  similarity  in  other  respects. 
Diversity  of  color  was  held  not  to  constitute  sufficient  differ- 
entiation in  Schmidt  v.  Brieg,3  in  which  the  court  said:  "  In 
fact  the  only  material  difference  between  the  two  labels  in  de- 
sign and  appearance  exists  in  the  colors,  but  this  is  no  defense. 
The  difference  in  color  is  a  mere  probative  fact,  a  circumstance 
to  be  considered  by  the  court  in  determining  the  ultimate  ques- 
tion as  to  whether  the  defendant's  devices  so  closely  resembled 
the  plaintiff's  labels  as  to  deceive  the  public,"  and,  naturally, 
little  importance  will  be  attached  to  marked  differences  or  even 
total  dissimilarity  in  parts  of  a  package  that  are  hidden  or  in- 
conspicuous, as  the  bottom,  or  perhaps  the  sides  or  ends,  if  at 
the  same  time  there  is  a  close  resemblance  in  the  part  most 
exposed  to  view,  such  as  the  top  of  the  package. 

Defendant's  top  label  for  tobacco  or  cigarettes  was  of  the 
same  size  as  plaintiff's,  and  had  a  similar  light,  clouded  back- 
ground. There  was  a  general  resemblance  in  the  devices  borne 
by  the  labels;  the  lettering  also  as  to  size,  color,  arrangement, 
and  general  effect  was  very  similar  on  the  two  labels.  Instead 
of  the  words  "  Monopol  Tobacco  Works  "  defendant's  label 
bore  the  words  "  North  Pole  Tobacco  Works,"  and  the  wrap- 
pers on  the  bottom  of  the  box  were  dissimilar.  Defendant  was 
enjoined.4 

s*  Samuel  W.  Rushmore  v.  Manhat-  3 100    Cal.    672-81-1893 ;    35    Pac. 
tan  Screw  &  Stamping  Worte,   (C.  623;  22  L.  R.  A.  790. 
€.  A.  July,  1908),  citing  Hall  Signal  *  Monopol  Tobacco  Works  v.  Gen- 
Co.  v.  Railway  Signal  Co.,  153  Fed.  sior,  32  Misc.    (N.  Y.)   87-1900;  66 
907;   Cleveland  Foundry  Co.  v.  Sil-  N.  Y.  Supp.  155. 
ver,  134  Fed.  591;  Hildreth  v.  Nor- 
ton, C.  C.  A.  Feb.  11,  1908. 


Dress  or  Get-up  of  Goods.  309 

The  deception  may  arise  not  only  from  the  use  of  words  that 
are  truthful  in  themselves,  but  from  the  printing  of  words  in 
such  colors  and  in  such  a  general  manner  or  with  such  accom- 
paniments as  to  produce  a  false  impression. 

In  Keller  x.B.F.  Goodrich  Co.,5  there  was  such  a  simulation. 
Plaintiff  made  ' '  Akron  Dental  Rubber. ' '  Defendant  made  and 
sold  "  Non-Secret  Dental  Vulcanite,  made  according  to  an 
analysis  of  the  Akron  Dental  Rubber."  They  printed  this 
name  so  that  the  words  ''Akron  Dental  Rubber  "  appeared  in 
red  ink  and  were  prominent.  The  defendant  claimed  that  there 
was  no  infringement  because  his  labels  did  not  assert  that  his 
article  was  that  of  the  plaintiff's,  that  the  similarity  would  not 
mislead.  The  court  said :  ' '  We  should,  perhaps,  be  able  to. 
sustain  the  views  of  the  appellant's  counsel  if  it  were  not  that 
the  words  constituting  the  appellee's  trade-mark  are  printed 
in  colors  that  attract  attention  at  once,  and  are  so  prominently 
displayed  as  to  catch  and  hold  the  eye.  The  manner  in  which 
the  words  that  form  the  appellee's  trade-mark  are  printed  is 
such  as  to  make  them  very  conspicuous,  thus  indicating  the 
purpose  of  the  appellant  to  reap  some  advantage  from  the 
trade-mark,  and  not  merely  to  impart  information.  If  the  ob- 
ject had  been  to  impart  information  simply,  it  is  evident  that 
no  such  prominence  would  have  been  given  those  words." 

§  155.  Imitation  of  a  Single  Feature,  Such  as  Color,  Form, 
Etc. —  The  general  rule  that  imitation  of  color  alone,  or  of 
form  alone,  does  not  amount  to  unfair  competition  is  subject 
to  exceptions.  In  Cook  &  Bernheimer  Co.  v.  Ross,6  the  imitation 
complained  of  was  solely  in  the  shape  of  the  bottle,  the  labels 
being  distinctive.  Complainant  had  the  sole  privilege  of  bot- 
tling at  the  distillery  ' '  Mount  Vernon  "Whiskey, ' '  and  of  attach- 
ing to  the  bottles  the  distiller's  guarantee  of  purity,  though 
others  were  also  entitled  to  purchase  in  bulk  and  bottle  and  sell 
as  "  Mount  Vernon  Whiskey."  Complainant  adopted  a  peculiar 
and  novel  square  and  bulging-necked  bottle  and  after  the  whis- 
key bottled  and  marketed  by  it  had  obtained  a  wide  reputa- 
tion and  had  become  associated  by  the  public  with  the  square- 
shaped  bottle,  defendant  changed  its  form  of  bottle  and  began. 

•117  Ind.  556-7-1888;  19   N.   E.         °73  Fed.  203-1896. 
196. 


310  Unfair  Business  Competition. 

to  use  a  Chinese  copy  of  complainant's,  although  they  claimed 
to  be  using  stock  bottles  purchased  in  the  open  market.  De- 
fendant's use  of  this  shape  was  held  to  amount  to  unfair  com- 
petition, and  a  preliminary  injunction  was  granted.    See  §  165. 

In  Sterling  Remedy  Co.  v.  Spermine  Medical  Co.?  there  was 
a  clear  and  deliberate  imitation  of  the  peculiar  and  usual  shape 
and  color  of  labels  and  style  of  box  adopted  by  the  complain- 
ant, as  well  as  of  letter  press  and  of  the  name  applied  to  the 
goods.  Held,  that  there  should  be  an  injunction  against  the 
form  of  tablet  and  shape  of  box  as  well  as  against  the  use  of 
infringing  names.  So,  also,  in  Franck  v.  Frank  Chicory  Co.,9 
the  use  of  a  particular  label  was  specifically  prohibited,  where 
there  had  been  imitation  in  other  respects  also.  The  court  con- 
sidered itself  not  bound,  in  such  cases,  to  limit  its  injunction 
to  the  combined  use  of  all  the  features  of  imitation. 

Generally  speaking,  a  trader  cannot  be  entitled,  even  after 
long  and  exclusive  use,  to  monopolize  a  particular  color  or  a 
particular  shape,  size,  or  style.  "  The  trend  of  the  law  is 
strongly  toward  the  proposition  that,  in  ordinary  circum- 
stances, the  adoption  of  packages  of  peculiar  form  and  color 
alone,  unaccompanied  by  any  distinguishing  symbol,  letter, 
sign,  or  seal  is  not  sufficient  to  constitute  a  trade-mark."9 

This  general  rule  has  been  applied  in  a  variety  of  ways.  In 
Fleischmann  v.  Starkey10  for  example,  it  was  held  that  no  ex- 
clusive right  could  be  acquired  to  use  a  yellow-colored  label  for 
packages  of  yeast.  In  Mumm  v.  Kirk,11  complainant's  cham- 
pagne was  known  as  "  Mumm's  Extra  Dry,"  and  the  bottle 
had  a  capsule  of  peculiar  color.  Defendant  used  a  capsule 
of  similar  color,  and  described  his  wine  as  "Extra  Dry." 
His  labels  were  entirely  different,  but  the  labels  often  dropped 
off  in  cooling  before  the  bottle  reached  the  consumer.  There 
were  minor  differences  in  dress,  in  addition  to  the  difference 
in  labels,  and  no  actual  deception  was  proved.  The  defendant 
was  not  required  to  change  the  color  of  his  label.    Had  there 

T112  Fed.  1000-1901  (C.  C.  A.  7th  1025  Fed.  127-1885. 

Cir.).  u40  Fed.  589-1889   (C.  C.  S.  D. 

8  95  Fed.  88-1899.  N.  Y.). 

*  Philadelphia  Novelty  Mfg.  Co.  v. 
Rouss,  40  Fed.  585-1889  (C.  C.  S. 
D.  N.  Y.). 


Dress  ok  Get-up  of  Goods.  311 

been  any  proof  of  deception  at  all,  it  would  seem  that  this  was 
a  proper  case  for  an  injunction.    See  §  42. 

§  156.  A  Collocation  of  Features,  Which  Singly  Might 
be  Copied,  is  Unfair. —  It  was  attempted  in  Hennessy  v. 
Dompe,12  to  defend  an  action  for  the  copying  of  the  general 
appearance  of  a  brandy  bottle  label  by  contending  that,  before 
a  comparison  could  be  made,  all  features  of  the  label  common 
to  the  trade  must  be  eliminated,  and  then  it  must  be  decided 
(1)  whether  the  remaining  features  of  the  label  were  used  by 
purchasers  to  distinguish  and  recognize  the  goods,  and  (2)  if 
so,  were  those  features  used  by  the  defendant  sufficiently  simi- 
lar to  those  of  the  plaintiff  to  cause  confusion.  The  court  used 
this  elimination  method  in  deciding  against  the  plaintiff,  but 
after  an  appeal  had  been  taken,  and  before  it  was  heard,  the 
defendants  admitted  their  label  was  an  infringement,  and  con- 
sented to  an  injunction. 

No  one  can  have  a  trade-mark  monopoly  in  color  of  paper, 
or  in  shape  of  label,  or  in  color  of  ink;  but  a  general  collocation 
of  such  details  will  be  protected  by  injunction.  Where  a  de- 
fendant and  its  predecessors  had  long  used  on  their  granite- 
ware  a  lozenge-shaped  label,  printed  in  black  ink,  on  grayish 
blue  paper,  the  complainant  subsequently  began  to  manufac- 
ture similar  ware,  using  a  rectangular  label  of  larger  size  than 
defendant's,  printed  in  dark  blue  ink  on  light  blue  paper,  with 
a  trade  device  on  the  upper  half.  Three  years  later  defendant 
changed  its  label  for  one  similar  as  to  paper  and  ink,  placing  on 
the  upper  half  its  old  lozenge-shaped  trade-mark.  No  reason 
for  the  change  was  shown.  No  weight  was  given  to  defend- 
ant's affidavits  that  there  had  been  no  intention  to  mislead,  and 
it  was  held  unfair  competition.13 

An  exclusive  right  to  use  a  particular  form,  color,  or  other 
feature,  not  by  itself,  but  in  combination  with  certain  other 
features,  may  be  acquired.  In  New  England  Aivl  &  Needle  Co. 
v.  Marlborough  Awl  &  Needle  Co.,1*  defendant  imitated  plain- 

12 19  R.  P.  C.  333-1902.  "168  Mass.   154-1897;   46   N.   E. 

13  Lalance  &  Grosjean  Mfg.  Co.  v.      386. 
National  Enameling  &  Stamping  Co., 
109    Fed.    317-1901    (C.    C.    S.    D. 
N.  Y.). 


312  Unfair  Business  Competition. 

tiff's  packages  in  the  color  of  the  box  and  color  of  the  label,  the 
words  and  type  of  the  inscription,  and  in  practically  every 
other  detail  excepting  the  name  and  address  of  the  manufac- 
turer. In  deciding  this  to  be  unfair  competition  Holmes,  J., 
after  remarking  that  no  monopoly  of  color  could  be  claimed, 
said  (p.  156)  :  "  But  the  most  universal  element  may  be  ap- 
propriated as  the  specific  mark  of  a  plaintiff's  goods  if  it  is 
used  and  claimed  only  in  connection  with  a  sufficiently  com- 
plex combination  of  other  things.  The  plaintiff  did  not  claim 
the  exclusive  right  to  brown  labels  for  awls,  but  it  claimed  the 
exclusive  use  of  the  brown  color  in  the  combination  which  we 
have  described.  If  the  only  other  element  besides  the  color  had 
been  a  box  of  a  certain  size,  and  a  label  of  a  certain  shape,  the 
case  might  be  different,15  but  when  there  is  added  an  inscrip- 
tion which  both  in  its  pictorial  aspect  of  black  marks  and  in  its 
meaning  was  calculated  to  confuse  if  not  to  deceive,  the  plain- 
tiff's claim  seems  to  us  moderate." 

In  this  class  of  cases  the  ultimate  question  asked  is  this :  Is 
the  defendant  not  expressly,  but  in  effect,  representing  or  en- 
abling the  retailer  to  represent  to  the  public  that  the  goods 
offered  are  the  familiar  goods  of  the  complainant1?  The  various 
resemblances  are  to  be  regarded  as  evidentiary  facts,bearing  on 
the  one  hand  on  the  presumable  intent  of  the  defendant  and  on 
the  other  on  the  probable  effect  upon  the  mind  of  the  ordinary 
purchaser.  Thus  in  Frese  v.  Bachof,16  Wheeler,  J.,  said: 
"  Probably  no  mere  form  of  a  package  would  ever  alone 
amount  to  a  representation,  capable  of  deceiving,  that  the  wares 
contained  in  it  were  those  of  any  particular  make.  But,  when 
the  form  of  the  packages,  the  color  of  the  wrappers  and  papers 
done  up  with  them,  and  the  form  and  color  of  the  labels  are 
considered  all  together,  it  is  quite  apparent  that  when  they 
had  been  so  long  used  by  the  orator's  firm  for  holding  this 
particular  compound  when  offered  for  sale,  the  mere  appear- 
ance of  the  packages  would  amount  to  a  representation  that 
they  contained  that  article,  of  that  manufacture."  In  this  case 
the  name  of  the  article,  rightfully  used  by  both  parties,  was 
"  Hamburg  Tea,"  which  defendant  put  up  in  packages  closely 

15  Enoch    Morgan's     Sons     Co.    V.  16 14  Blatehf .  432-5-1878. 

Troxell,  89  N.  Y.  292-1S82. 


Dress  or  Get-up  of  Goods.  313 

resembling  complainant's  in  being  of  long  cylindrical  shape, 
with  pink  wrappers,  and  papers  of  instructions  of  the  same 
colors  and  with  labels  similar  in  arrangement  and  appearance, 
the  only  substantial  difference  being  in  the  names  of  the 
parties. 

In  Jones  v.  Halhvorth,17  Kekewich,  J.,  after  remarking  that 
any  one  of  a  number  of  features  may  be  open  to  common 
use,  so  that  as  to  any  one  of  them  singly  there  may  be  an  inno- 
cent resemblance,  says:  "  But,  by  an  inductive  process,  one 
may  come  to  this  conclusion,  that  every  one  of  those  perfectly 
innocent  things,  when  combined  in  a  series,  may  produce  some- 
thing which  is  the  reverse  of  innocent." 

§  157.  Resemblance  in  Several  Features  May  be  Fair,  if 
These  Features  Are  Common  to  the  Trade. — Even  where  there 
is  a  general  resemblance,  such  as  may  tend  to  some  confusion 
in  the  mind  of  the  casual  purchaser,  and  although  such  a  re- 
semblance may  appear  to  have  been  designed  by  the  purchaser, 
the  details  in  which  similarity  is  shown,  and  indeed  the  simi- 
larity of  general  effect  may  be  common  to  the  trade.  To  con- 
stitute unfair  competition  the  features  imitated  must  be  such 
as  distinguished  plaintiff's  goods  from  others,  not  such  as  he 
shares  with  the  trade  generally.  For  example,  in  United  States 
Tobacco  Co.  v.  McGreenery,18  the  complainant  sold  cut  plug 
tobacco  in  packages  bearing  conspicuously  the  words  "  Cen- 
tral Union  "  and  "  Union  Made  "  and  the  label  of  a  trade 
union,  together  with  other  words  and  devices.  Defendant  sold 
similar  tobacco  in  packages  of  the  same  size,  the  paper  being  of 
the  same  kind  and  quality.  Its  packages  were  conspicuously 
marked  "  Union  Leader,"  and  while  there  was  in  other  points 
a  degree  of  resemblance,  there  were  also  noticeable  differences, 
particularly  in  the  device.  Wrappers  resembling  complain- 
ant's in  shape,  size,  style  and  color  of  paper,  and  in  style  of 
lettering  had  long  been  common,  and  the  word  "  Union  "  had 
been  used  in  various  brands.  Some  purchasers  were  shown 
to  have  been  deceived.  It  was  held,  that  the  resemblance  was 
principally  in  features  often  combined  in  common  use,  and  that 

17 14  R.  P.  C.  225-34-1897. 
"144    Fed.    531-1906     (Circ.    Ct. 
Mass.) ;  affirmed  in  144  Fed.  1022. 


314  Unfair  Business  Competition. 

deception  had  not  been  shown  to  have  arisen  from  resemblance 
in  any  feature  peculiar  to  complainant.  Said  the  court  (p. 
534) :  "  While  fraud  alone  is  not  sufficient  to  entitle  the  com- 
plainant to  a  decree,  yet  it  is  a  fact  to  be  taken  into  considera- 
tion by  the  court.  A  defendant  may  lawfully  seek  to  enlarge 
his  custom  by  selling  cheaper  than  his  rivals,  packages  of  to- 
bacco put  up  in  an  old  form ;  and  this,  even  if  the  packages  thus 
sold  are  bought  by  a  careless  public  in  the  belief  that  the  to- 
bacco is  that  of  the  complainant.  A  defendant  may  not  law- 
fully seek  to  obtain  the  complainant's  custom  by  deceiving  the 
public  through  the  appropriation  of  some  characteristic  of  the 
complainant's  package  which  was  new  in  the  art,  and  is  the 
complainant's  peculiar  property.  The  distinction  thus  ex- 
pressed must  be  kept  carefully  in  mind." 

So  in  Payton  &  Co.  v.  Snelling,  Lampard  &  Co.,  Ltd.™  the 
court  remarked :  ' '  The  evidence  is  very  strong  that  one  tin 
may  be  mistaken  for  the  other, —  very  likely;  but  why?  Be- 
cause of  the  features  common  to  them  and  common  to  all. ' ' 

In  Hoyt  v.  Hoyt~°  plaintiffs  made  and  sold  "  Hoyt's  German 
Cologne  "  at  Lowell,  while  defendants  made  and  sold  "  Hoyt's 
Egyptian  Cologne  "  at  Philadelphia.  Defendants  used  a  bottle 
of  similar  shape  to  that  used  by  plaintiffs.  This  was,  however, 
a  stock  bottle  which  anyone  could  buy ;  and  they  used  a  similar 
cap  label,  although  one  that  had  been  used  by  others  than  plain- 
tiffs ;  they  also  packed  bottles  in  boxes  in  the  peculiar  manner 
adopted  by  plaintiffs.    Held  not  unfair  competition. 

19 17  R.  P.  C.  48-53-1900.    "  What  reason  of  defendant  having  adopted 

is  it  that  the  plaintiffs  must  make  out  some    mark    or    device    or    label    or 

in  order  to  entitle  them  to  succeed  in  something  of  that  kind  which  rlistin- 

this     action?     *     *     *     Where     the  guishes    the    plaintiff's    from    other 

features  in  which  they  resemble  each  goods  which  have,  like  his,  the  fea- 

other  are  common  to  trade,  what  has  tures  common  to  the  trade.     Unless 

the  plaintiff  to  make  out?    He  must  the  plaintiff  can  bring  his  case  up 

make  out  not  that  the  defendant's  are  to   that   he   fails."      Cited   with   ap- 

like  his  by  reason  of  those  features  proval  and  as  a  rule  by  Kekewich,  J., 

which  are  common  to  them  and  other  in  King  &   Co.  v.  Gillard,  21  R.  P. 

people,  but  he  must  make  out  that  C.  589. 

the  defendant's  are  like  his  by  reason  20143   Pa.    St.   623-1891;   22   Atl. 

of  something  peculiar  to  him  and  by  755;  13  L.  R.  A.  343. 


Dress  or  Get-up  of  Goods.  315 

An  injunction  was  refused  in  Coats  v.  Merrick  Thread  Co.,21 
in  which  there  was  a  certain  similarity  in  labels  placed  upon  the 
ends  of  spools,  especially  in  the  use  of  concentric  rings  of  black 
and  gold,  which  had  become  common  in  the  trade,  and  in  em- 
bossing on  the  border  the  numeral  40  for  the  number  of  the 
thread.  The  labels  were  differentiated  by  the  manufacturer's 
name  conspicuously  printed. 

§  158.  Remarks  as  to  Classification  of  the  Following  Cases 
of  Simulation  in  Dress  or  General  Get-up. —  Concurring  simi- 
larity in  name  and  in  dress  may  amount  to  unfair  competition, 
though  the  similarity  in  either  respect  by  itself,  would  not  be 
enough.  In  the  following  pages  are  groups  of  cases  in  which 
certain  features  of  the  get-up  are  prominent  or  distinctive, 
but  there  are  many  cases  of  similarity  of  dress,  or  general 
appearance  of  labels  and  packages,  which  are  very  difficult  to 
classify,  because  it  is  a  question  of  the  concurrent  effect  of 
many  details;  and  it  is  often  impossible  to  put  one's  finger  on 
a  particular  point  of  resemblance,  and  say  that  is  the  controll- 
ing or  salient  feature. 

Each  case  stands  by  itself.  The  questions  presented  by  any 
particular  case  are  rather  of  fact  than  law.  Similarity  in  gen- 
eral, and  in  the  goods  themselves,  as  distinguished  from  the 
containers  or  packages,  are  separately  treated  in  the  chapters 
on  Similarity  and  Simulation  of  Articles  Themselves. 

§  159.  Designs,  Devices,  and  Figures. —  It  is  a  common 
practice  to  designate  goods  by  designs,  symbols,  and  figures 
which  are  original  or  peculiar,  and  serve  to  identify  the  goods 
in  the  same  manner  as  a  name  identifies  them.  These  devices 
are  of  particular  value  to  a  maker  of  goods  which  are  largely 
consumed  by  ignorant  people  or  people  unfamiliar  with  the 
English  language,  because  they  enable  a  purchaser  of  this  sort 
to  recognize  the  goods  when  he  sees  them  a  second  time.  See 
§  39.  In  many  cases  the  devices  are  not  technical  trade-marks, 
and  not  copyrighted.  It  is  with  such  devices  that  we  shall 
deal  here.  In  Colman  v.  Crump,22  the  plaintiffs  for  seventeen 
years  had  made  mustard,  placing  on  their  packages  a  figure  of 
a  bull's  head.    When  they  began  to  use  it,  they  knew  of  no  one 

21 149  U.   S.  562-1892;  37  L.  ed.         "  70  N.  Y.  573-78-1877. 
847;  13  Sup.  Ct.  966. 


316  Unfair  Business  Competition. 

using  such  mark.  They  never  copyrighted  this  mark,  nor  at- 
tempted to  comply  with  the  statutes  of  the  United  States  re- 
lating to  trade-marks.  Their  product  came  to  be  known  as 
1 '  Bull 's  Head  Mustard. ' '  The  defendants  were  manufacturers 
of  labels  which  were  used  by  mustard  manufacturers ;  some  of 
these  labels  were  almost  exact  copies  of  the  plaintiffs'  labels. 
Held,  that  plaintiffs  were  entitled  to  restrain  the  use  of  a  simi- 
lar figure  on  other  brands  of  mustard,  the  court  saying  (p. 
580):  "  The  fact  that  the  same  device  is  used  upon  other 
articles  of  merchandise  does  not  take  from  the  plaintiffs  their 
rights  to  its  exclusive  use  on  this  one  article  of  their  manufac- 
ture," and  also  "  A  party  may  have  a  property  in  —  that  is, 
an  exclusive  right  to  use  —  a  name,  symbol,  figure,  letter,  form, 
or  device  to  distinguish  goods  manufactured  and  sold  by  him, 
and  those  manufactured  and  sold  by  others,  or  to  indicate  when 
or  by  whom,  or  at  what  manufactory  the  article  was  manu- 
factured. It  is  an  infraction  of  that  right,  to  print  or  manu- 
facture, and  sell  for  use  upon  articles  of  merchandise  of  the 
same  kind  as  those  upon  which  it  is  used  by  the  proprietor,  any 
device  or  symbol  which  by  its  resemblance  to  the  established 
trade-mark  will  be  liable  to  deceive  the  public,  and  lead  to  the 
use  of  that  which  is  not  the  manufacture  of  the  proprietor,  be- 
lieving it  to  be  his." 

Not  only  are  these  devices  on  goods  important  in  themselves, 
as  identifying  the  goods  to  the  eye  of  the  purchaser,  but  they 
have  an  additional  value,  as  the  basis  of  popular  nicknames  for 
the  goods  on  which  they  are  put.  For  instance,  in  the  case  just 
cited,  mustard  on  which  a  bull's  head  had  long  appeared  came 
to  be  known  as  "  Bull's  Head  Mustard,"  and  plasters  on  which 
a  red  cross  had  been  used  came  to  be  called  "  Red  Cross 
Plasters."23  In  the  latter  case  it  was  held,  that  the  use  of  a 
Greek  cross  of  somewhat  different  form,  with  a  red  circle  in 
the  center,  was  an  infringement,  despite  the  fact  it  bore  on 
its  face  letters  and  marks  not  on  the  other  label,  and  though 
there  was  little  resemblance  in  the  package  or  other  parts  of 
the  get-up. 

"Johnson  v.   Bauer  &   Black,  82    Fed.  662-1897. 


Dress  or  Get-up  of  Goods.  317 

In  Seixo  v.  Provezende,24  the  court  says :  "  I  do  not  consider 
the  actual  physical  resemblance  of  its  two  marks  to  be  the  sole 
question  for  consideration.  If  the  goods  of  a  manufacturer 
have  from  the  mark  or  device  he  has  used  become  known  in  the 
market  by  a  particular  name,  I  think  that  the  adoption  by  a 
rival  trader  of  any  mark  which  will  cause  his  goods  to  bear  the 
same  name  in  the  market  may  be  as  much  a  violation  of  the 
rights  of  that  rival  as  the  actual  copy  of  his  device. ' ' 25 

§  160.  Signatures  and  Initials. —  Among  those  devices 
which  are  frequently  copied  are  the  autograph  signatures  of 
the  makers  or  inventors  of  the  goods  on  which  the  labels  ap- 
pear. These  are  to  be  considered  in  the  same  category  with  all 
of  these  figures  and  devices,  and  even  when  not  trade-marks 
are  protected  under  the  rules  of  unfair  competition.  In 
C.  F.  Simmons  Medicine  Co.  v.  Simmons?*  the  head-note  states 
the  ' '  defendant  manufactured  and  sold  a  medicine  to  which  he 
gave  a  name  similar  to  the  name  of  the  complainant's  medicine, 
including  the  name  of  the  inventor;  he  placed  on  the  wrapper 
of  his  medicine  a  picture  of  a  bust,  and  an  autograph  signa- 
ture, complainant's  medicine  having  long  been  known  among 
an  ignorant  class  of  purchasers  by  similar  signs;  he  issued 
directions  which  were  almost  a  literal  copy  of  the  complain- 
ant's; and  he  published  a  card  in  which  he  described  himself 
as  the  son  and  successor  of  the  inventor  of  complainant's 
medicine."     This  was  unfair  competition. 

M  1  Ch.  App.  192-6-1865.  Wellman  &  Dwire  Tobacco  Co.  v. 

"Philadelphia      Novelty      Co.      v.  Ware  Tobacco  Works,  46  Fed.  289- 

Blakesley  Novelty  Co.,  37  Fed.  365-  1891   (Cir.  Ct.  Minn.).     Defendants' 

1889    (Cir.    Ct.    Conn.).     Defendant  label  for  tobacco  packages  resembled 

put  up  hair-crimpers  in  a  box  of  the  complainants'  in  the  colors  used,  and 

same  color,   and  bearing   a  label   of  in  certain  devices  of  a  shield  or  ban- 

the  same  color  as  used  by  the  plain-  ner,  and  an  ellipse  with  a  circle,  and 

tiff.      The   boxes   were   not    alike   in  otherwise,  so  that  in  spite  of  varia- 

shape,  nor  in  the  printed  matter  on  tions    there    was    a    general    resem- 

the    label,    but    there   was    a    resem-  blance.     There  was  no  similarity  in 

blance  in  respect  to  the  central  de-  the  names  applied  by  the  represen- 

vice,   a   woman's   head   or   bust ;   the  tative  manufacturers  to  their  tobacco, 

use   of    this    device    by    defendant's  Injunction. 

predecessor  antedated  that  by  plain-  2081     Fed.     163-1897     (Cir.     Ct. 

tiff's    predecessor.      Preliminary    in-  Ark.), 
junction  denied. 


318  Unfair  Business  Competition. 

"Where  a  name,  portrait,  or  facsimile  signature  of  another 
is  employed  without  consent  and  against  his  will,  with  a  view 
to  deceive  the  public  into  the  belief  that  the  product  sold  was 
prepared  by  him,  and  offered  to  purchasers  with  his  sanction, 
an  injunction  will  be  granted.  Jenkins,  Circuit  Judge,  has  said 
in  such  a  case:  "  The  name  of  an  eminent  philanthropist  was 
taken  without  his  consent  and  against  his  protest.  The  as- 
sumption of  name  was  a  wrong  which  we  cannot  doubt  a 
court  of  equity  would,  upon  his  application,  have  restrained, 
even  if  the  purpose  of  the  corporation  had  been  wholly  inno- 
cent and  praiseworthy;  but  here,  it  is  clear,  the  name,  the 
portrait,  and  the  facsimile  signature  of  Rev.  Sebastian 
Kneipp  were  employed,  not  only  without  his  consent  and 
his  will,  but  were  so  assumed  with  a  view  to  deceive  the  public, 
and  to  induce  the  belief  that  the  produce  marketed  and  sold 
was  prepared  under  his  supervision,  and  offered  to  the  public 
with  his  sanction.  Under  such  circumstances,  equity  will  not 
hesitate  to  extend  its  preventive  arm."27 

§  161.  Reading  Matter  on  Labels. —  Reading  matter  on 
labels  and  wrappers  often  consists  of  the  names  of  makers, 
agents,  etc.,  designations  of  quality  or  quantity,  directions  for 
use,  cautions  against  imitations,  warnings  as  to  features  of 
the  marks  used  on  the  genuine  goods.  The  questions  relating 
to  names  are  fully  discussed  in  the  chapter  on  Names  of 
Goods.  Directions  for  use  are  frequently  copied  in  whole 
or  in  part  by  an  unfair  dealer.  Thus  phraseology  alone 
may  be  copied  or,  in  addition,  the  type  and  general  method 
of  printing  may  be  imitated  also.  Doing  either  or  both  of 
these  things,  especially  if  accompanied  by  imitation  on  other 
points,  may  be  treated  as  unfair  competition.  In  Ball  v. 
Siegelf*  it  is  said  that  it  is  well  settled  that  directions,  adver- 
tisements, notices,  etc.,  constitute  no  part  of  a  trade-mark. 
In  Bates  Mfg.  Co.  v.  The  Bates  Machine  Co.,2Q  plaintiff  put 
up  his  goods  in  boxes  on  one  end  of  which  was  a  label  and 
the  words  "  A  Few  Don'ts."    Under  this  title  were  seven 

27  Kathreiner's  Mahkaffee  Fabriken  Mueller   Mfg.    Co.    v.   McDonald    & 

Mit  Beschraenkter  Haftung  v.  Pastor  Moonson  Mfg.  Co.,  1001-1909. 

Kneipp  Medicine  Co.,  82  Fed.  321-  "116  111.  137-1886;  4  N.  E.  667. 

1S97;  53  U.  S.  App.  425.     See  also  "141  Fed.  213-1905. 


Dress  or  Get-up  of  Goods.  319 

different  sentences  which  begin  with  the  word  "  Don't." 
Defendant's  goods  were  put  up  in  boxes  of  similar  shape;  on 
the  end  of  each  was  a  label  bearing  the  words  "A  Few 
Don'ts."  On  both  the  defendant's  and  plaintiff's  labels  the 
word  "  Dont's,"  was  in  large  capital  letters.  Under  the 
title  of  defendant's  labels  were  seven  sentences  commencing 
with  the  word  "  Don't;"  four  of  these  were  literally  the 
same  as  those  used  upon  the  plaintiff's  boxes,  and  the  other 
three  were  substantially  the  same.  The  labels  on  complain- 
ant's boxes  also  contained  the  words  "  Useful  Hints."  On 
the  defendant's  boxes  was  a  series  of  "  Important  Sug- 
gestions," the  substance  of  these  hints  and  suggestions  being 
the  same.     Preliminary  injunction  was  granted. 

§  162.  Misleading  Use  of  a  Label  Proper  in  Itself. —  A  per- 
son may  have  full  right  to  the  use  of  a  label  and  yet  by 
concealing  a  part  of  it  in  packing  his  goods,  or  by  unduly 
emphasizing  a  part  of  it,  give  the  impression  that  his  goods 
are  those  of  someone  else.  The  cases  here  given  are  those 
showing  instances,  not  of  the  copying  of  a  label,  but  of 
attempts  to  approximate  the  appearance  of  the  plaintiff's 
goods  by  misuse  of  a  label,  which  properly  displayed  would  not 
be  a  violation  of  the  plaintiff's  rights.  In  Williams  v.  Brooks,50 
plaintiffs  for  ten  years  past  had  been  making  hairpins  at  Bir- 
mingham, England,  under  the  name  of  D.  F.  Tayler  &  Co., 
These  they  put  up  in  pink,  yellow,  and  brown  papers  and 
imported  same  into  the  United  States.  For  three  years  the 
defendants  had  been  making  hairpins  in  the  United  States  and 
had  put  them  up  in  pink  and  yellow  papers,  upon  which  was  a 
printed  statement  that  the  hairpins  were  manufactured  by 
L.  B.  Taylor  &  Co.,  Cheshire,  Connecticut.  The  court  below 
found  that  the  wrappers  were  so  nearly  like  those  of  the  plain- 
tiffs as  to  deceive  the  careless  and  unwary  purchaser.  The 
defendants  used  their  labels  with  full  knowledge  of  the  plain- 
tiffs' trade-mark  and  reputation.  The  defendants  always  sold 
their  pins  as  of  domestic  manufacture,  and  for  less  than  the 
plaintiffs  charged  for  theirs.  When  the  defendants'  pins 
were  done  up  in  ounce  packages  and  looked  at  separately, 

30  50  Conn.  27S-18B2. 


320  Unfair  Business  Competition. 

the  words  "  Cheshire,  Conn.,"  appeared  plainly  on  the  wrap- 
per; bnt  when  these  were  gathered  into  pound  packages,  the 
whole  of  the  printed  label  was  not  seen.  Says  the  court 
(p.  282) :  "  The  defendants  have  no  right  to  destroy  or  dimin- 
ish the  property  of  the  plaintiffs  in  the  name  of  '  D.  F.  Tay- 
ler  &  Co.,'  and  in  the  device  and  vignette  with  which  it  is 
connected,  applied  to  the  manufacture  and  sale  of  hairpins, 
by  so  printing  the  name  of  '  L.  B.  Taylor  &  Co.,'  not  borne 
by  either  of  them,  but  purchased  solely  for  use  in  connection 
with  this  particular  branch  of  their  business,  as  part  of  a 
device  and  vignette  upon  a  pink  or  yellow  wrapper 
as  that  their  entire  device  shall  so  closely  resemble  that  of 
the  plaintiffs  as  to  be  liable  to  deceive  careless  and  unwary 
purchasers;  and  this  regardless  of  the  fact  that  the  defend- 
ants believed  their  manner  of  use  of  the  name  and  vignette 
to  be  within  the  law ;  for  the  injury  to  the  plaintiffs  remains 
the  same." 

§  163.  Tobacco  Tags,  Cigar  Bands,  Etc. —  Tags  on  tobacco 
packages  and  bands  on  cigars  are  so  conspicuous  as  badges 
of  identity,  in  view  of  the  similarity  in  various  other  points 
for  the  most  part  common  to  the  trade,  that  sometimes  a 
resemblance  in  these  has  been  held  to  be  calculated  to  deceive, 
even  though  the  name  on  the  tags  or  bands  may  have  been 
different.  In  Lo Hilar d  v.  Wight?1  complainants  fastened 
upon  the  outside  of  the  plugs  of  their  tobacco,  tin  tags 
variously  colored  according  to  the  brand,  with  the  name  of 
the  brand  and  of  the  makers  stamped  upon  them.  They  were 
the  first  to  use  this  device,  and  the  public  had  come  to  recog- 
nize their  products  by  these  tags.  Defendant,  or  parties  rep- 
resented by  him,  afterward  put  upon  the  market  plug 
tobacco,  bearing  the  tin  tags  of  the  same  size  and  shape,  the 
same  color  and  enamel  finish.  The  words  were  very  differ- 
ent, but  they  were  in  small  letters  and  in  ink  of  the  same 
color.  Defendant's  plugs,  however,  were  of  different  size, 
color,  and  flavor.  Held,  that  while  defendant  had  a  right  to 
use  tin  tags,  he  had  no  right  to  use  tags  so  nearly  resembling 
complainant's  as  to  mislead  the  public.     In  Reynolds  To- 

31 15  Fed.  383-1883  (C.  C.  Md.). 


Deess  or  Get-up  op  Goods. 


321 


bacco  Co.  v.  Allen  Bros.  Tobacco  Co.,32  complainant  and  its 
predecessors  had  since  about  1880  made  and  sold  a  brand 
of  plug  tobacco  under  the  name  "  Schnapps,"  and  from  1894 
attached  to  the  plugs  distinctive  tags  of  lozenge  shape,  with 
the  word  "  Schnapps  "  in  slanting  red  letters  on  dark  back- 
ground. This  brand  was  largely  advertised  with  pictures 
of  the  tag  and  was  generally  recognized  by  the  tag,  having  a 
very  large  sale  in  the  South  where  many  customers  could  not 
read.  Defendant  afterward  put  on  the  market  an  inferior 
grade  of  tobacco  in  plugs  of  the  same  size  and  shape,  with 
tags  of  the  same  color  and  slant,  the  only  difference 
being  that  the  name  "  Traveller  "  was  used  instead  of 
"  Schnapps."  It  was  shown  that  the  tag  was  intended  to, 
and  actually  did,  deceive  customers.  Injunction  granted. 
A  preliminary  injunction  has  been  granted  against  the  use  by 
defendant  upon  cigars  of  panatella  shape,  bands  similar  in 
colors,  and  bearing  a  similar  elongated  oval  escutcheon.33 

§  164.  Wrappers,  Cartons,  Etc. —  The  rules  of  similarity, 
as  to  copying  goods  themselves  and  as  to  labels  apply  to  all 
sorts  of  containers,  such  as  boxes,  wrappers,  cartons,  bags, 
envelopes  and  the  like.  Cases  involving  a  simulation  of  these 
articles  could  be  multiplied,  but  it  would  be  only  a  reiteration 
of  rules  given  elsewhere.34 


42 151  Fed.  819-1907  (C.  C.  W.  D. 
Va.). 

"Clay  v.  Kline,  149  Fed.  912- 
1906  (C.  C.  S.  D.  N.  Y.). 

34  Pennsylvania  Salt  Mfg.  Co.  v. 
Myers,  79  Fed.  87-1897  (C.  C.  E. 
D.  Mo.).  Complainant  had  long  sold 
concentrated  lye  in  cylindrical  pack- 
ages, the  wrappers  of  which  were 
white  with  black  margins  and  hori- 
zontal lines,  and  bore  prominently 
the  word  "  Saponifier,"  by  which 
for  many  years  complainant  had  dis- 
tinguished its  lye  from  that  of  other 
manufacturers.  Defendant  then  put 
upon  the  market  lye  in  packages  of 
similar  size  and  shape,  the  wrappers 
being  white,  with  similar  black  lines, 


and  bearing  the  word  "  Saponifier " 
in  large  letters.  Defendant's  own 
trade  name,  however,  appeared  on 
the  package,  and  the  reading  matter 
in  smaller  type  was  different.  Held 
unfair  competition  on  defendant's 
part.  Centaur  Co.  v.  Killenberger, 
87  Fed.  725-1898  (C.  C.  N.  J.).  In 
connection  with  the  use  of  the  same 
name  "  Castoria "  (which  had  be- 
come public  property),  defendant 
used  a  wrapper  of  the  same  color  as 
complainant's,  bearing  an  inscription 
similar  in  type,  arrangement  and 
general  appearance,  and  in  other  fea- 
tures resembling  complainant's.  Held, 
unfair  competition.  The  court  says: 
"  Bearing:    in    mind    that    the    com- 


322  Unfaib  Business  Competition. 

§  165.  Copying  Bottles  Used  by  Competitor. —  Where  the 
use  of  bottles  of  the  same  shape  as  complainants'  has  been 
enjoined,  there  have  generally  been  other  features  imitated  at 
the  same  time,  but  in  some  cases  a  peculiar  form  and  ap- 
pearance devised  for  a  bottle  has  been  the  principal,  if  not 
substantially  the  only,  feature  imitated.  In  Cook  &  Bern- 
iheimer  Co.  v.  Ross,35  plaintiff  bottled  whiskey  at  a  distillery, 
using  bottles  of  a  peculiar  shape  and  bearing  the  distiller's 
guaranty  of  purity,  and  through  extensive  advertising  the 
bottles  were  relied  upon  by  purchasers  to  identify  plaintiff's 
whiskey.  Defendants  who  had  been  dealing  in  the  same  whis- 
key of  their  own  bottling  adopted  a  bottle  of  the  same  shape 
and  appearance  as  that  of  plaintiff's,  but  with  entirely  differ- 
ent labels,  and  the  use  of  such  bottles  by  the  defendant  was 
restrained.  In  Chas.  E.  Hires  Co.  v.  Consumers'  Co.,36  the 
defendant,  a  bottler,  after  having  for  some  time  used  dis- 
tinctive labels  and  forms,  of  bottles  for  its  root  beer  and 
other  beverages,  changed  the  form  of  its  root  beer  bottles 
only,  and  adopted  a  form  identical  with  the  peculiar  and 
unusual  form  long  used  by  complainant,  and  also  changed  its 
labels  so  as  to  resemble  complainant's  somewhat  closely.  Held, 
that  it  was  not  enough  to  enjoin  the  use  of  labels  similar  in 
appearance,  and  that  the  use  of  a  bottle  of  similar  shape 
should  also  be  enjoined.  The  court  says:  "  The  court  below 
seems  to  have  placed  its  refusal  to  extend  its  injunction  to 
include  the  bottle  used  by  the  defendant  upon  the  notion  that 
one  has  the  right,  under  all  circumstances,  to  use  any  form 
of  bottle  he  may  desire.  An  action  like  the  present  proceeds 
upon  no  such  ground,  but  upon  the  principle  that  one  may  not, 
by  means  lawful  in  themselves  when  devoted  to  a  lawful  end, 
perpetrate  a  fraud  upon  the  public,  or  infringe  the  rights  of 
another." 

plainant's  wrapper  was  well  known  but   are   chargeable  to   design "    (id. 

to    the   trade    for   years    before    the  p.  726). 

adoption  of  that  of  the  defendant,  it  "73   Fed.   203-1S96    (C.   C.   S.  D. 

is  impossible,  in  view  of  the  accumu-  N.  Y.). 

lated  resemblances,  to  avoid  the  con-  36 100  Fed.  809-1900  (C.  C.  A.  7th 

elusion  that  these  numerous  similari-  Cir.). 

ties  were  not  the  result  of  chance, 


Dress  or  Get-up  of  Goods.  323 

The  Bauer  Company  procured  bottles  to  contain  its  cordial 
to  be  made  in  the  same  ungainly  shape  as  the  bottles  used  by 
the  Carthusian  monks.  The  glass  was  colored  to  correspond 
with  the  color  of  the  cordial  contained  therein,  precisely  as 
was  done  by  them.  Its  labels  corresponded  also  in  color  with 
their  labels,  and  the  arrangement  of  the  lettering  thereon 
corresponds  with  that  upon  these  labels.  It  substituted  the 
word  "  Chasseurs  "  for  Chartreuse,"  —  a  word  not  dissim- 
ilar in  sound  and  appearance,  and  likely  to  delude  a  pur- 
chaser. Defendant  made  untrue  statements  "  putting  forth  a 
false  suggestion  that  the  article  was  imported  from  France, 
when  in  fact  it  was  made  in  the  city  of  Chicago."  Said  the 
court :  ' '  We  have  little  patience  with  such  schemes. ' ' 37 

In  Kronthal  Waters,  Ltd.  v.  Becker?8  complainant  and  its 
predecessors  had  long  sold  in  the  United  States  the  waters 
of  a  German  mineral  spring,  using  a  bottle  with  a  peculiarly 
shaped  blue  neck  label  marked  "  Blue  Label,"  and  the  water 
was  widely  known  as  "  Blue  Label  Mineral  Water."  De- 
fendant began  to  use  for  a  different  mineral  water  a  bottle 
of  the  same  shape,  and  size,  and  color,  with  neck  and  body 
labels  of  the  size  and  style  and  almost  the  same  color,  the 
words  on  the  labels,  however,  being  different,  though  ar- 
ranged similarly.     A  preliminary  injunction  was  granted. 

In  Evans  v.  Von  Laer,39  the  resemblances  were  (1)  in  the 
use  of  the  name  "  Montserrat  Lime  Fruit  Juice,"  (2)  in  the 
color  of  the  labels,  and  (3)  in  the  form  of  the  bottles.  Mont- 
serrat was  the  island  from  which  both  parties  imported  lime 
juice,  and  the  bottles  were  of  a  shape  common  in  the  lime  juice 
trade.  This  was  not  considered  unfair,  but  defendant  was 
enjoined  from  refilling  complainant's  bottles.    See  §  155. 

§  166.  Refilling  Containers  That  Have  Been  Once  Used. — 
To  buy  goods  of  another  in  bulk,  and  resell  under  truthful 
labels  is  not  usually  unfair.  Plaintiffs  manufactured  a  dis- 
infectant, known  as  "  Coudy's  Fluid,"  and  these  words  were 
registered  as  their  trade-mark.     It  was  generally  sold,  both 

87  Bauer    Co.    v.     Order    of    Car-  "  137  Fed.  649-1905   (C.  C.  E.  D. 

thusian    Monks,    120    Fed.    78-80-      Pa.). 
1903  (C.  C.  A.  7th  Cir.).  "32  Fed.  153-1887  (C.  C.  Mass.). 


324  Unfair  Business  Competition. 

at  wholesale  and  retail,  in  small  bottles.  In  this  instance, 
however,  they  had  sold  a  cask  of  the  fluid  to  defendants,  who 
had  bottled  it,  and  were  selling  the  bottles  labeled  with  the 
words  "  Coudy's  Fluid  (Crimson)  warranted  genuine."  It 
appeared  that  there  had  been  some  deterioration  of  the  fluid, 
due  to  the  action  upon  it  of  the  wood  of  the  cask.  Held,  that 
defendants  were  within  their  rights. 

The  court  (Kekewich,  J.)  says:  "  A  manufacturer  who  sells 
to  a  dealer,  in  bulk,  an  article  generally  sold  and  used  in  small 
quantities,  without  any  restriction  on  its  disposal,  must  be 
taken  to  authorize  the  dealer  to  sell  the  article  in  small  quanti- 
ties, as  being  the  manufacture  of  his  vendor."  40 

It  is  unfair,  however,  to  misstate  the  quality  in  reselling. 
The  rights  which  are  acquired  by  the  purchaser  in  bulk  do  not 
permit  him  to  misrepresent  the  quality  of  the  article  to  his 
customers.  Could  this  be  done  it  would  be  a  means  of  unfairly 
Injuring  the  reputation  of  another's  goods.41 

Where  the  defendant  took  the  label  off  of  the  boxes  contain- 
ing plaintiff's  753  grade  pens,  which  was  a  poor  grade,  and 
put  on  one  bearing  number  303,  which  number  plaintiff  used 
for  his  fine  grade  goods,  it  was  held,  that  the  plaintiff  was  de- 
frauded by  these  acts  which  caused  destruction  of  confidence 
in  his  goods.42 

Again,  purchasers  in  bulk  will  be  enjoined  from  represent- 
ing that  they  are  the  original  makers,  when  they  resell.  Plain- 
tiffs were  noted  manufacturers  of  brandy  in  France,  which 

40  Concly   <&   Mitchell   v.    Taylor    &  bulk  a  quantity  of  the  latter  grade, 

Co.,  56  L.  T.  N.  S.  891-1887   (Ch.  which  they   put   up   in  bottles  with 

Div.).     See  also  Russia  Cement  Co.  distinctive    labels     correctly     stating 

v.    Frauenhar,    133    Fed.    518-1904  that   it   was   manufactured   by   com- 

(C.  C.  A.).  plainant  and  bottled  by  defendants, 

a  Russia  Cement  Co.  v.  Katzen-  but  on  which  they  printed  "  Le 
stein,  109  Fed.  314-1901  (C.  C.  S.  Page's  Liquid  Glue."  Held,  that 
D.  N.  Y.).  Complainant  manufac-  such  use  for  an  inferior  grade,  of  a 
tured  glue  well  known  as  "  Le  Page's  trade  name  which  had  become  asso- 
Glue."  Different  grades  were  desig-  ciated  by  the  public  with  complain- 
nated  by  some  additional  word;  the  ant's  best  grade,  was  fraudulent  and 
highest  grade  was  called  "  Le  Page's  should  be  restrained  as  unfair  corn- 
Liquid    Glue,"    and   the   lowest    "  Le  petition. 

Page's  Fish  Head   Glue."     Defend-  *  Gillott  v.  Kettle,  3  Duer  (N.  Y.) 

ants    purchased    of    complainant    in  G24-1S54. 


Dress  or  Get-up  of  Goods.  325 

they  sold  both  in  casks  and  in  bottles,  the  bottled  goods  being 
of  superior  quality.  Defendant  purchased  plaintiffs'  brandy  in 
casks,  and  then  bottled  and  sold  it,  the  bottles,  labels,  etc.,  color- 
ably  imitating  those  of  plaintiffs,  though  the  label  indicated  in 
small  letters  that  the  bottling  was  done  by  defendant.  Held, 
that  defendant  should  be  enjoined  from  thus  passing  off  on  the 
public  plaintiffs'  second-grade  brandy  as  their  bottled  and 
first-grade  goods.43 

A  presumption  of  intent  to  pass  off  will  arise  where  one  sells 
bitters  in  competition  with  Hostetter's  Bitters  which  are 
usually  marketed  in  bottles,  and  puts  his  product  in  demijohns 
marked  "  Host-Style  Bitters,"  and  gives  with  the  demijohn  an 
empty  Hostetter  bottle.44 

Selling  a  brandy  which  is  not  Hennessy's  out  of  a  bottle 
marked  as  if  containing  Hennessy's  Brandy,  will  be 
enjoined.45 

Purchase  of  second-hand  retainers  —  bottles,  boxes,  and  the 
]ike  will  not  give  to  the  buyer  a  right  to  again  use  them  if  such 
nse  will  cause  deceit,  and  so  injure  the  original  user  of  the  con- 
tainer. Such  conduct  cannot  fail  to  cause  a  passing  off  of  the 
goods  of  the  second  user  for  those  of  the  first.  These  cases 
usually  concern  refilling  of  bottles,  which  often  are  of  a  pecu- 
liar shape  identified  by  the  public  with  a  particular  brand 
of  goods. 

In  Eckhart  v.  Consolidated  Company,*®  both  parties  were 
flour  manufacturers.  Eckhart  delivered  flour  to  customers  in 
bags  bearing  the  various  trade-marks  of  the  Consolidated  Com- 
pany. Eckhart  justified  himself  by  saying  that  his  customers 
were  bakers,  and  that  sometimes  by  agreement  they  sold  to 
bakers  large  quantities  of  flour  in  bulk,  and  that  the  bakers 
furnished  bags  to  them  for  the  delivery  of  the  flour ;  that  they 
also  purchased  from  bakers  second-hand  bags,  among  which 
were  bags  of  the  Consolidated  Company.    They  denied  that  the 

43  Hennessy    v.    White,    6    Wyatt,  **  Hennessy  v.  Neary,  19  R.  P.  C. 

Webb   &   A'Beckett   216-1869    (Vic-      36-1901. 
toria)  ;   also   Hennessy   v.   Hogan,   6  *  72  111.  App.  70. 

W.  W.  &  A'B.  225.     - 

"Hostetter  Co.  v.  Becker,  73  Fed. 
297-1S96  (C.  C.  S.  D.  N.  Y.). 


326  Unfair  Business  Competition. 

public  was  deceived  or  that  the  bakers  were  deceived  or  that 
the  Consolidated  Company  were  injured.  Held,  *  *  *  "To 
entitle  a  complainant  to  relief  by  injunction  in  a  case  like  the 
present,  it  is  not  necessary  to  show  that  the. public  are  or  have 
been  actually  deceived.  The  remedy  by  injunction  is  preven- 
tive, and  it  is  sufficient  to  show  facts  from  which  the  court  can 
deduce  the  conclusion  that  the  complainant  has  reasonable 
ground  to  fear  that  the  public  and  the  complainant's  customers 
may  be  deceived,  to  the  injury  of  the  complainant;  that  the  use 
made  by  the  defendant  of  the  complainant's  marks  is  calculated 
to  deceive,  and  probably  will  deceive  the  public,  to  the  injury 
of  the  complainant.  It  is  obvious  that,  after  appellants  deliv- 
ered flour  to  their  customers,  the  bakers,  in  bags  marked  and 
branded  as  before  stated,  appellants  would  not,  in  all  cases,  fol- 
low the  bags,  nor  could  they  control  the  bakers  in  the  disposi- 
tion of  their  flour,  nor  could  they  have  personal  knowledge  as 
to  how  the  bakers  disposed  of  it,  or  as  to  whether  or  not  they 
sold  it,  or  any  of  it,  or  exposed  it  for  sale  in  the  bags  in  which 
it  was  delivered  to  them;  or  represented  to  their,  the  bakers', 
customers,  that  bread  sold  by  them  was  made  of  flour  of  the 
brands  marked  on  the  bags,  showing  the  bags.  By  delivering  to 
the  bakers  their  flour  in  bags  marked  as  stated,  they  put  it  in 
the  power  of  the  bakers  to  dispose  of  the  flour  as  that  of 
appellee. ' ' 47 

The  following  cases  deal  with  refilling  of  second-hand  bottles. 
In  Hostetter  Co.  v.  Sommers,48  complainant  had  long  sold 
"  Hostetter 's  Stomach  Bitters  "  in  bottles  of  a  peculiar  form, 
and  its  product  had  a  wide  reputation.  Defendants  sold 
spurious  bitters  in  bulk,  marking  them  "  Stomach  Bitters  " 
or  "  Hostetter 's  Bitters,"  with  the  intent  (as  the  evidence  was 
held  to  establish)  that  the  purchasers  should  put  them  in 
second-hand  Hostetter  bottles,  and  sell  them  by  the  drink  to 
customers  applying  for  "  Hostetter 's  Bitters."  Held  unfair 
competition.49 

47  Citing;     Coats     v.     HolbrooJc,     2  geman-Beinert  Distilling   Co.,  4fi  Fed 
Sandf.  Ch.  (N.  Y.)  586.  188-1891  (C.  C.  E.  D.  Mo.);  Samuel 

48  84  Fed.  333-1897    (C.   C.   S.  D.  Bros.  &  Co.  v.  Hostetter  Co.,  118  F. 
N.  Y.).  257,  55  C.  C.  A.  111. 

48  See  also  Hostetter  Co.  v.  Brueg- 


Dress  or  Get-up  of  Goods.  327 

Hostetter  made  "  Hostetter's  Celebrated  Stomach  Bitters," 
these  words  appearing  conspicuously  on  his  label.  Adams 
made  and  sold  bitters  of  their  own  manufacture,  marketing 
them  in  bottles  of  the  same  size  and  shape  and  color  as  plain- 
tiff's, often  using  old  bottles  of  the  plaintiff's  on  which  "  Hos- 
tetter "  was  blown  in  the  glass,  but  covered  by  defendant's 
label.  The  color  and  general  appearance  of  defendant's  label 
was  very  similar  to  plaintiff's,  and  it  contained  similar  devices 
such  as  the  figures  of  a  horse  and  rider  and  shield.  The  prepa- 
ration was  described  in  this  label  as  "  Clayton  &  Russell's  Cele- 
brated Stomach  Bitters."  Plaintiff  held  entitled  to  an  in- 
junction and  to  an  accounting  of  profits.50 

§  167.  Substitution  and  Selling  of  Inferior  Goods  in  Dress 
of  Goods  of  a  Higher  Grade. — ' '  In  supplying  a  customer 
who  orders  and  expects  to  get  the  goods  of  A.,  the  substitution 
of  any  other  goods  is  illegal,  unless  the  customer  understands 
that  he  is  not  getting  what  he  ordered  and  assents  thereto. 
The  above-mentioned  rule  is  quite  in  accordance  with  the 
principle  of  commercial  honesty."  50a 

The  complainants  manufactured  an  antiseptic  called  "Ar- 
gyrol  ' '  and  defendant,  a  jobbing  druggist,  kept  silver  nuclei  - 
nate,  a  more  or  less  similar  but  cheaper  preparation,  which 
he  was  accustomed  to  offer  customers  who  called  for  argyrol; 
it  was  held  to  be  unfair  eompetition.50b 

It  is  a  clear  infringement  of  trade-mark  to  place  in  a  box 
bearing  the  trade-mark  of  one  manufacturer  the  goods  of  an- 
other and  then  to  offer  or  deliver  the  goods  to  purchasers,  and 
the  courts  will  not  readily  accept  an  explanation  that  such 
substitution  was  accidental.51 

For  a  dealer  to  buy  his  competitor's  inferior  grade  whiskey 

80  Hostetter  v.  Adams,  10  Fed.  838-  labels.     Held  a  fraud  on   complain- 

1882  (C.  C.  S.'D.  N.  Y.);  Hostetter  ant.     Evans   v.    Von   Laer,   32   Fed. 

v.    Martinoni,    110    Fed.     524-1901  153;    Sawyer    Crystal    Blue    Co.    v. 

(C.    C.   N.    D.    Cal.).     "Hostetter's  Hubbard,  32  Fed.  388. 

Bitters,"  long  well  known,  were  sold  BOa  Cutler  on  Passing  Off,  London, 

by  complainant.     Defendant  sold  to  1904,  p.  1-2. 

customers    inquiring   for   Hostetter's  60b  Barnes  v.  Pierce,  104  Fed.  213- 

Bitters,"  other  bitters  as  "  H.  Bitters,"  1908   (C.  C.  N.  Y.). 

placing  them  in  complainant's  empty  "  Barnett   v.    Leuchars,   13   L.    T. 

bottles  which  still  bore  the  original  N.  S.  495-1865. 


328  Unfair  Business  Competition. 

and  sell  it  under  the  name  of  a  high  grade  brand  of  that  com- 
petitor is  unfair.51a 

Where  distillers  and  selectors  of  gin  have  for  many  years 
put  up  and  exported  their  gin  in  dark  glass  bottles  of  a  dis- 
tinctive size  and  shape,  having  their  firm  name,  address,  and 
registered  monogram  trade-mark  blown  in  the  glass,  one  who 
refills  such  bottles  with  an  inferior  quality  of  gin,  which 
he  sells  without  notice  that  such  gin  is  not  genuine,  infringes 
their  rights,  and  should  be  restrained,  though  the  refilled 
bottles  are  sold  at  a  less  price  than  the  genuine,  and  do  not  have 
such  distiller's  monogram  paper  label  and  stamp  on  the  cork 
( head-note)  .51b 

§  168.  Get-up  of  Wagons,  Buildings,  Etc. —  There  may  be 
unfair  competition  by  any  sort  of  unfair  representation, —  as 
much  by  the  painting  or  construction  of  a  wagon  or  a  building 
as  by  misuse  of  a  name  or  a  label.  The  following  are  cases  of 
this  sort. 

In  Nokes  v.  Mueller,52  both  the  parties  were  engaged  in  the 
sale  of  milk  in  the  city  of  Springfield,  Illinois,  the  appellee 
having  been  in  the  business  for  about  sixteen  years.  During 
all  this  time  in  supplying  his  customers  he  used  wagons  which 
had  a  yellow  running  gear,  brown  body,  and  white  top,  with 
a  picture  of  two  cows,  some  trees,  a  running  brook,  some  lilies 
and  a  fence,  and  the  name  "  Walnut  Grove  Dairy  "  on  them. 
Appellant  commenced  business  in  Springfield  in  February, 
1895,  using  wagons  with  a  black  top,  and  with  no  name  on  them, 
to  deliver  milk  to  his  customers.  Shortly  before  this  suit,  he 
took  them  to  the  shop  where  appellee  had  his  wagons  painted. 
Prior  to  this  time  appellant  had  had  no  work  done  at  this  shop. 
These  wagons  were  painted  with  running  gear  yellow,  body 
brown  and  top  white.  In  front  of  the  entrance  on  either  side 
was  a  picture  of  two  cows,  a  mountain,  a  Swiss  castle  with  a 
cupola,  a  running  brook,  and  some  lilies.  In  the  rear  of  the 
entrance,  and  on  either  side,  on  the  white  tops,  there  was  in 
black  letters  the  name  "  Walnut  Park  Dairy,"  and  under  this 

"'  Teacher  v.   Levy,   23   R.   P.    C.       enbach,   112    Fed.    528-1901    (C.    C. 
117-1905.  N.  D.  Cal.). 

51b  Van  Hoboken  v.  Mohns  <&  Kalt-  M  72  111.  App.  431. 


Dress  or  Get-up  of  Goods.  329 

the  name  "A.  B.  Nokes."  At  this  time  appellant  was  living  on 
what  was  known  as  the  "  Walnut  Park  Farm."  The  court 
said :  ' '  The  ajypellee  in  sixteen  years  has  established  a  large 
j)rofitable  trade,  and  carries  it  on  under  a  given  name,  and 
should  be  protected  from  those  attempting  to  usurp  his  busi- 
ness. The  wrong  in  this  case  does  not  consist  in  appellant 
painting  the  running  gear  of  his  wagons  yellow,  or  the  body 
brown,  or  the  top  white,  etc.  The  wrong  is  in  their  accumula- 
tion, not  in  any  one  of  them  alone;  but  all  combined  are  suf- 
ficient to  entitle  appellee  to  an  injunction.  *  *  *  It  cannot 
be  maintained  that  appellee  so  impoverished  the  vocabulary 
of  the  English  language,  and  so  exhausted  the  taste  and  skill 
of  the  artist  who  lettered  and  painted  the  pictures  on  his 
wagons,  that  appellant  was  compelled  to  imitate  him  so  closely. 
We  feel  constrained  to  hold  from  the  facts  and  circumstances 
in  proof  of  this  case  that  his  purpose  was  to  usurp  appellee's 
business,  and  draw  some  of  his  customers  to  him,  and  would 
thereby  injure  appellee's  business  he  has  been  so  many  years 
in  establishing." 

In  N.  Y.  Cab  Co.  v.  Mooney,53  plaintiff  painted  its  cabs  in  a 
peculiar  style  to  distinguish  them  from  other  cabs.  Defendant 
painted  his  in  the  same  manner,  and  used  plaintiff's  trade- 
mark, slightly  changed.  Held,  injunction  rightly  granted;  that 
defendant  had  attempted  to  imitate  the  cabs  of  plaintiff  to 
secure  trade. 

Weinstock  &  Co.  v.  Marks:54  "  The  store  of  plaintiff  was 
known  as  '  Mechanics'  Store,'  and  established  a  wide  and 
honorable  reputation  as  a  fair  and  reliable  house  with  which  to 
deal.  He  had  erected  a  building  of  peculiar  architecture,  there 
being  none  like  it  in  the  city  of  Sacramento;  and  defendant 
thereupon  erected  a  store  building,  immediately  adjoining  that 
of  plaintiff,  in  every  respect  of  similar  architecture.  He  re- 
frained from  placing  any  sign  in  or  upon  the  building  indicat- 
ing the  proprietorship  of  the  business,  or  designating  it  in  any 
way  so  that  it  might  be  distinguished  from  the  store  of  plain- 
tiff. Many  of  plaintiff's  customers  were  deceived  into  pur- 
chasing  goods    in    defendant's    store;   and    defendant    thus 

53 15  W.  N.  Cases,  152-1884.  "  109  Cal.  529 ;  30  L.  R.  A.  182. 


330  Unfair  Business  Competition. 

diverted  from  the  plaintiff  much  of  its  trade.  The  court  said : 
"  The  defendant  had  the  right  to  erect  his  building,  and  erect 
it  in  any  style  of  architecture  his  fancy  might  dictate.  He  had 
the  right  to  erect  it  in  the  particular  locality  where  it  was 
erected.  He  had  a  right  there  to  conduct  a  business  similar  to 
plaintiff's.  He  had  a  right  to  do  all  these  things,  for,  of  them- 
selves, they  did  not  offend  against  equity,  but  when  they  were 
done  with  a  fraudulent  intent,  with  the  purpose  of  tolling  away 
plaintiff's  customers  by  a  deception,  a  fraud  is  practiced,  and 
equity  will  do  what  it  can  to  right  the  wrong.  The  decision,  of 
the  trial  court  in  effect  ordered  defendant  to  place  signs  both 
inside  and  outside  his  building,  showing  to  the  world  the 
proprietorship  thereof.  We  think  this  decree  holds  defendant 
to  a  rule  too  strict,  in  that  it  requires  the  proprietorship  of 
the  store  to  be  shown.  In  this  particular  we  think  the  decree 
should  be  modified  so  as  to  require  that  the  defendant,  in  the 
conduct  of  this  business,  shall  distinguish  his  place  of  busi- 
ness from  that  in  which  the  plaintiff  is  carrying  on  its  busi- 
ness, in  some  mode  or  form  that  shall  be  a  sufficient  indication 
to  the  public  that  it  is  a  different  place  of  business  from  that 
of  the  plaintiff." 

§  169.  Labels. —  To  discuss  these  cases  as  to  dress,  and 
especially  those  relating  to  labels,  in  the  abstract  is  very  diffi- 
cult. A  court  when  passing  on  such  a  case,  has  before  it,  in 
most  instances,  one  of  each  of  the  articles  in  question.  Descrip- 
tion is  inadequate  to  convey  an  exact  idea  of  what  information 
the  court  obtains  from  an  examination  of  these  objects.  The 
question  is,  what  will  be  the  court's  opinion  of  the  similarity 
in  the  general  effect  of  the  two  labels,  when  it  compares  them?  55 

To  classify  this  sort  of  cases  is  hardly  possible;  to  deduce 
from  them  any  general  rules  is  equally  difficult.  To  use  the 
words  of  the  Sixth  Circuit  Court  of  Appeals:  "The  sharp 
competition  in  business  of  recent  years  has  brought  about  a 
great  increase  in  suits  of  this  character,  and  the  decisions 
therein  have  rapidly  multiplied.     It  would  be  a  difficult  task 

"  Wirtz  v.  Eagle  Bottling  Co.,  50   N.  J.  Eq.  164-1892 ;  24  Atl.  658. 


Dress  or  Get-up  of  Goods.  331 

to  harmonize  them  upon  the  principles  which  all  of  them  recog- 
nize. This  is  because  of  such  an  infinite  variety  in  the  facts 
and  circumstances  with  which  the  courts  have  had  to  deal,—  a 
variety  perhaps  not  surpassed  in  the  field  of  any  other  depart- 
ment of  judicial  labor.  The  decisions,  however,  do  undoubt- 
edly help  to  sharpen  the  judgment,  and  often  shed  a  line  of 
light  which  leads  one  to  a  just  conclusion.  Each  case  depends 
upon  its  own  facts  and  circumstances,  and  must  be  decided 
upon  the  application  thereto  of  settled  principles  which  have 
received  no  substantial  modification  in  recent  years  ' ' 56 
(p.  360). 

§  170.  Labels  not  Registered  or  Copyrighted  are  Protected. 
—  In  England,  many  labels  are  never  registered  under  the 
Merchandise  Marks  Acts,  because  of  the  requirements  of  the 
patent  office;  and  while  a  larger  proportion  are  registered 
here,  there  are  many  American  labels  which  are  protected 
only  by  the  rules  of  unfair  competition.  It  is  very  important, 
therefore,  that  the  rules  of  law  as  to  what  is  a  passing  off 
of  one  label  for  another  be  definitely  fixed,  that  those  who 
use  them  may  know  the  extent  of  the  protection  which  the 
law  gives  them  when  their  labels  are  not  registered,  for  it 
seems  that  there  is  a  prevailing  idea  that  unless  such  regis- 
tration is  effected,  the  label  is  practically  common  property. 
This  is  very  far  from  the  truth.  It  is  just  as  unfair  to  copy 
an  unregistered  label  if  a  fraud  is  likely  to  result  as  to  copy 
one  that  is  registered. 

§  171.  Features  of  an  Action  as  to  a  Label. — Where  the  case 
involves  the  unfair  copying  of  a  label,  it  must  first  be  decided 
as  to  what  the  plaintiff's  right  in  the  label  is.  We  have  con- 
sidered here  only  such  labels  as  are  not  copyrighted.  The 
purpose  of  a  person  who  will  stoop  to  simulate  an  existing 
label  is  to  confuse  his  goods  with  some  brand  which  is  more 
widely  known  than  his  own.  His  aim  is  to  construct  a  label, 
which,  when  closely  compared  with  existing  ones,  will  show 
differences,  but  which  will  be  so  similar  to  others,  that  buyers 
will  not  detect  them  in  purchasing.  The  decision  as  to 
whether  his  act  is  fraudulent  must,  to  a  large  extent,  be  de- 

M  Proctor  &   Gamble  Co.  v.  Globe  Refining   Co.,   92  Fed.   357-60-1899. 


332  Unfaie  Business  Competition. 

termined  by  the  evidence  of  the  labels  themselves,  as  placed 
before  the  court.  They  are  the  best  evidence.  No  opinion 
of  anyone,  expert  or  layman,  can  help  the  court  to  say  one 
is  or  is  not  similar  to  another.  If  the  court  finds  it  difficult 
to  see  how  one  could  be  so  close  a  copy  of  the  other,  and  not 
cause  confusion  to  the  purchasers  buying  such  an  article  under 
the  usual  conditions  accompanying  its  sale,  it  will  usually  issue 
an  injunction,  certainly  an  order  directing  a  more  distinctive 
label  be  used  by  defendant. 

§  172.  Kinds  of  Labels.— Mr.  Cutler57  divides  labels  into 
two  sorts,  (1)  those  "  in  which  the  most  prominent  or  salient 
feature  is  some  device  which  may  or  may  not  be  a  registered 
trade-mark,  or  some  catch-word  or  catch-words  which  the 
owner  claims  as  his  trade  name;"  and  (2)  those  in  which  the 
prominent  or  salient  feature  "  is  the  general  appearance,  or 
as  it  is  called,  the  '  get-up  '  of  the  label."  In  the  first  class, 
no  doubt,  Mr.  Cutler  would  include  those  labels  in  which  the 
name  is  the  important  feature. 

§  173.  Classification  of  Label  Cases. —  As  has  been  noted, 
it  is  impracticable,  if  not  impossible,  to  classify  label  cases 
satisfactorily,  on  a  basis  of  principles  of  law,  for  the  prin- 
ciples are  the  same  in  all  cases.  The  difficulty  is  in  applying 
them  to  various  conditions.  Consequently,  the  cases  which 
are  deemed  important  as  showing  such  application  of  law  to 
fact,  are  given  in  the  following  pages,  without  comment  usu- 
ally, but  roughly  classified  as  follows: 

I.  Cases  in  which  the  name  is  the  principal  feature  of  the 
label. 

II.  Cases  involving  labels  in  which  the  salient  feature  is 
some  device  or  catch-word,  which  is  copied  or  simulated. 

III.  Cases  in  which  there  is  no  salient  feature,  but  the  whole 
get-up,  including  the  name,  is  unfair. 

IV.  Cases  involving  general  resemblance  and  also  a  likeness 
in  the  names  used  which  does  not,  however,  constitute  unfair 
competition. 

"  Passing  Off,  London,   1904,  pp.  23-24. 


Dkess  or  Get-up  of  Goods. 


333 


V.  Cases  involving  no  similarity  in  name,  but  a  resemblance 
in  general  appearance  amounting  to  unfair  competition. 

VI.  Cases  not  involving  a  name,  in  which  the  general  like- 
ness in  get-up  is  not  close  enough  to  be  unfair. 

I.  Simulation  of  Labels  in  Which  a  Name  is  the  Principal 
Feature. —  The  cases  here  mentioned  are  in  many  instances 
the  same  in  character  as  those  cited  in  the  the  chapter  on 
"  Names  of  Articles  of  Merchandise,"  under  the  heading  of 
"  Idem  Sonans."  There  are  also  many  instances  in  the  Re- 
ports of  imitation  of  names,  not  with  the  purpose  of  making 
the  sound  the  same,  but  of  creating  such  likeness  as  will  catch 
the  eye.  The  principles  are  the  same  in  both  instances.  Many 
cases  involving  names  of  this  sort  are  found  in  the  chapters 
on  "  Miscellaneous  Business  Names,"  "  Family  Names," 
"  Corporate  Names,"  "  Geographical  or  Place  Names," 
"  Names  of  Articles  of  Merchandise,"  "  Similarity."  In  a 
note  below  are  given  cases  illustrating  this  distinction.58 


88  See  chapter  on  Names  of  Arti- 
cles of  Merchandise,  title  Idem  So- 
nans. Royal  Baking  Powder  Co.  v. 
Davis,  26  Fed.  293-1885  (C.  C.  E. 
D.  Mich.).  The  words  "Coral  Bak- 
ing Powder "  have  been  held  to  be 
in  themselves  no  infringement  of 
"  Royal  Baking  Powder,"  yet  their 
use  in  connection  with  labels  bearing 
a  general  resemblance  to  those  of 
the  Royal  Co.  in  colors,  ornamenta- 
tion and  otherwise,  was  enjoined. 
Sawyer  v.  Kellogg,  7  Fed.  720- 
1881  (C.  C.  N.  J.).  Complainant's 
bottles  of  bluing  bore  a  blue  label, 
containing  in  several  compartments, 
inscriptions  in  silver  bronze  letters, 
one  of  which  was  the  name  of  the 
article,  "  Sawyer's  Crystal  Blue  and 
Safety  Box."  Defendant  on  the 
order  of  parties  for  whom  he  made 
bluing,  used  a  label  of  the  same  size, 
color  and  type,  divided  into  com- 
partments corresponding  to  those  on 


complainant's  label,  one  of  which 
contained  the  name  of  the  article, 
"  Sawin's  Soluble  Blue  and  Pepper 
Box."  Held,  that  complainant  was 
entitled  to  an  injunction  against  the 
use  of  this  label,  and  to  an  account- 
ing of  profits  in  order  to  ascertain 
damages.  Clark  v.  Clark,  25  Barb. 
76-1S57.  Plaintiff  manufactured 
thread  at  Glasgow,  and  used  as  a 
trade-mark  four  concentric  circles,  of 
different  colors,  containing  in  the 
inner  circle  the  number  of  the  cotton, 
in  the  next,  "  J.  Clark,  Jr.,  &  Co., 
Mile  End,  Glasgow,"  in  the  next  "  Six 
cord  cabled  thread  warr'd  200 
yards,"  and  in  the  outer  circle  "  Sole 
agent,  Wm.  Whiteright,  New  York." 
Defendant,  the  New  York  agent  of 
J.  &  J.  Clark  &  Co.,  manufacturers 
of  similar  thread  at  Paisley,  used  a 
mark  closely  resembling  plaintiff's  in 
appearance,  there  being  four  concen- 
tric circles  of  the  same  size  and  same 


334 


Unfair  Business  Competition. 


//.  Cases  Involving  Labels  in  Which  the  Salient  Feature  is 
a  Device  or  Catch-Word  ivliich  is  Copied  or  Simulated.— 
He  who  claims  a  label  must  establish  to  the  court's  satis- 
faction, that  the  public  has  associated  with  the  distinctive  or 
salient  features  of  his  label  the  brand  of  goods  he  puts  on  the 
market  under  that  label.  Until  he  does  that,  he  has  no  ground 
for  claiming  the  right  to  restrain  another  person  from  using 
the  device,  or  mark,  or  name  which  appears  on  his  label.  If 
the  feature  relied  on  be  a  device  or  symbol,  even  the  names 
used  may  be  entirely  different  and  it  still  be  shown  that  there 
is  a  distinct  connection  between  this  device,  which  both  parties 
are  using,  and  the  plaintiff's  goods.  So,  also,  where  the  name 
is  the  distinctive  feature,  the  get-up  otherwise  may  be  very 
different.  In  Powell  v.  Birmingham  Vinegar  Brewery  Co. 
(supra),  the  two  labels  were  entirely  different  except  that 
both  bore  prominently  the  words  ' '  Yorkshire  Eelish. ' ' 

This  salient  feature  need  not  be  exactly  copied ;  it  may  be 


colors,  and  the  details  of  arrange- 
ment being  the  same.  The  inner  cir- 
cle had  the  same  number,  the  next 
the  words  "  Clark  &  Co.,  Seed  Hill, 
Paisley,"  the  third  "Sis  Cord  Cabled 
thread  warr'd  200  yards,"  and  the 
outer  circle  "  Sole  agent,  George 
Clark,  New  York."  This  showed  an 
intention  to  imitate  and  a  probability 
of  deception  and  the  defendant  was 
required  to  substitute  for  "  Clark  & 
Co."  the  firm  name  "  J.  &  J.  Clark 
&  Co."  and  to  change  the  order  of 
colors  and  the  style  of  lettering  and 
figuring.  Conrad  v.  Uhrig  Brewing 
Co.,  8  Mo.  App.  277-1880.  Conrad, 
a  brewer,  for  two  years  prior  to  this 
suit,  caused  beer  to  be  made  for  him 
by  a  process  called  the  "  Budweiser 
Process."  Budweis  is  a  small  Bohe- 
mian city  where  good  beer  is  made. 
Conrad  placed  upon  this  beer,  a  label 
in  the  shape  of  a  necktie  in  the 
center  of  which  were  three  C's  with 


barley  and  hop  leaves,  bearing  these 
words :  "  We  guarantee  that  this  beer 
is  brewed  especially  for  our  own 
trade,  according  to  the  Budweiser 
process,  of  the  best  Saazar  hops  and 
Bohemian  barley,  and  warranted  to 
keep  in  any  climate.  Take  notice 
that  all  our  corks  are  burned  with 
our  trade-mark,  etc."  After  his  beer 
had  made  a  reputation  for  itself,  de- 
fendant procured  from  the  same  en- 
graver a  label  of  the  same  size,  shape 
and  general  appearance  and  having 
the  same  peculiar  devices  of  a  crown 
and  wreaths.  It  bore  three  letter  B's 
and  the  following  words :  "  Cau- 
tion !  See  that  our  corks  are  burned 
with  our  trade-mark.  Beware  of 
imitation.  The  world  renowned 
Budweiser  lager-beer."  These  labels 
were  used  for  his  beer,  which  was 
inferior  to  plaintiff's  and  cheaper. 
Injunction  granted. 


Dress  or  Get-up  of  Goods.  335 

an  approximation.  In  Stephens  v.  Peel,59  plaintiffs  and  their 
predecessors  had  long  sold  ink  known  as  "  Stephens'  Blue 
Black,"  and  these  words  appeared  prominently  in  large,  white 
capitals  on  labels  of  peculiar  pattern  as  to  coloring  and 
arrangement  of  words.  Defendant  then  put  on  the  market 
ink  in  bottles  bearing  labels  on  which  appeared  prominently 
in  large,  white  capitals,  "  Steelpens  Blue  Black,"  and  in 
which  the  coloring  and  arrangements  of  the  other  words  and 
the  devices  on  the  label  closely  resembled  plaintiff's.  This 
was  a  colorable  imitation,   and  an  injunction  was  granted. 

The  National  Biscuit  Company  attached  to  the  ends  of  car- 
tons a  trade-mark,  consisting  of  the  words  "  In-er  Seal," 
printed  in  white  letters  with  a  fanciful  design  on  a  vivid  red 
label  with  clipped  corners.  Defendant  began  selling  biscuits 
in  packages  of  the  same  size  and  sometimes  of  similar  color, 
shape  and  appearance,  all  having  on  the  ends,  in  white  let- 
ters on  labels  of  the  same  shade  of  red,  with  clipped  corners, 
the  trade-mark  "  Factory  Seal,"  with  a  fanciful  design.  The 
defendant  was  enjoined  from  using  this  trade-mark  and  label 
without  a  clearer  differentiation  of  the  same  from  complain- 
ant's.60 

A  brewer  used  for  his  bottled  beer  a  label  with  a  con- 
spicuous diagonal  red  band,  bearing  in  white  letters  the  name 
of  the  beer.  Another  brewer,  in  the  same  city,  adopted  a 
diagonal  red  label,  the  general  effect  of  which  resembled  that 
of  the  former,  and  did  not  satisfactorily  explain  how  he  came 
to  adopt  this  particular  label.     Injunction  against  him.61 

Plaintiff  made  liquid  bluing,  marked  as  "  Sawyer's  Crys- 
tal Bluing."  An  employee  of  his  began  the  manufacture 
of  liquid  bluing;  his  labels  did  not  resemble  complainant's 
and  the  name  was  quite  different,  but  he  used  bottles  of  the 
same  size  and  shape,  with  a  bright  metallic  perforated  cap 
closely  resembling  that  on  complainant's  bottles.  Injunction 
granted.62 

C916  L.  T.  N.  S.  145-1867.  Clarke,    26    Fed.    410-1886    (C.    C. 

80  Ohio  Baking  Co.  v.  National  Bis-  Md.). 

cuit  Co.,  127  Fed.   116-1904   (C.  C.  "Sawyer     Crystal     Blue     Co.     v. 

A.  6th  Cir.).  Hubbard,  32  Fed.  388-1887    (C.  C. 

61  Anheuser-Busch   Brew.   Assn.   v.  Mass.).    See  7  Fed.  720. 


336  Unfair  Business  Competition. 

///.  Cases  in  Which  There  is  no  Salient  Feature,  but  the 
Whole  Get-up,  Including  the  Name,  is  Unfair. —  The  largest 
class  of  cases  under  the  head  of  labels  is  the  second  men- 
tioned by  Mr.  Cutler,  in  which  there  is  no  one  determining 
feature,  and  in  which  it  is  often  hardly  j>ossible  to  single  out 
particular  characteristics  which  may  be  termed  salient  or 
conspicuous,  but  which  show  resemblance  in  many  details, 
producing  a  similarity  of  general  effect. 

It  has  been  seen  in  the  chapter  on  ' '  Intent  ' '  that  an  intent 
to  deceive  and  defraud  may  be  presumed  from  facts  which 
seem  to  the  court  to  show  that  the  defendant 's  acts  will  cause 
loss  of  business  to  the  plaintiff,  or  deceit  of  purchasers. 
Various  authorities  have  held  that  such  an  intent  may  be 
presumed  from  facts  showing  that  one  article  or  its  label  or 
general  get-up  is  an  approximation  of  that  of  another.03 

Where  a  company  has  worked  through  years  to  build  up  a 
trade,  and  the  public  has  become  acquainted  with  its  goods, 
it  is  entitled  to  demand  protection  against  a  copying  of  its 
general  get-up.  A  purchaser  is  not  bound  to  be  painstaking 
in  selecting  his  purchase.  Although  he  has  the  opportunity 
of  comparing  the  labels  and  wrappings  of  various  articles,  he 
is  not  bound  to  do  so.  If  the  commodity  he  desires  costs 
very  little  he  is  still  more  likely  to  give  little  heed  to  what  he 
gets  and  courts  will  take  judicial  notice  of  this  fact.  If  there 
are  but  slight  and  minor  differences  between  the  article  he 
knows  from  having  used  it  before,  and  some  competing 
article,  so  that  he  cannot  easily  distinguish  them,  he  may  be 
deceived  and  buy  the  article  he  did  not  intend  to  buy.  Where 
the  differences  are  less  easily  distinguished  than  the  like- 
nesses —  where  the  ordinary  purchaser  would  be  more  likely 
to  believe  the  two  articles  were  the  same,  than  to  believe  they 
were  different  —  it  is  a  case  of  unfair  competition.  For  in- 
stance, in  Sterling  Remedy  Company  v.  Gorey,64  the  com- 
plainant sold  octagonal  cascara  tablets  marked  "  C.  C.  C," 
and  on  the  boxes  were  the  words  "  Cascarets,  Candy  Cathar- 
tic," and  other  matter.      Defendant's  tablets  were  exactly 

"Devlin  v.  McLeod,  135  Fed.  165-  "110  Fed.  372-1901  (C.  C.  N.  D. 
1904  (C.  C.  W.  D.  N.  Y.).  Ohio). 


Dress  or  Get-up  of  Goods.  337 

like  complainant's,  except  for  one  letter,  "  G,"  and  the  boxes, 
which  were  of  the  same  shape  and  nearly  the  same  color, 
bore  the  word  "  Cascara  "  and  (it  seems)  also  the  words 
"  Candy  Cathartic.''  There  were,  however,  dissimilarities 
sufficient  to  make  it  easy,  on  comparing  the  boxes,  to  distin- 
guish them.  The  resemblance  was  considered  more  observ- 
able to  an  ordinary  purchaser  than  the  differences  and  de- 
fendant was  charged  with  unfair  competition. 

It  often  happens  that  the  imitation  of  any  particular  detail, 
including  the  name  of  the  offending  article,  could  not  have 
been  interfered  with,  yet  the  imitation  of  several  features, 
resulting  in  a  similar  general  effect,  has  been  considered 
unfair  competition.65 

Sperry  &  Co.  v.  Percival  Milling  Co.,  81  Cal.  252-1889;  22  Pac.  651. 
Plaintiff  had  for  some  time  used  "  Germea  "  as  a  trade  name  or  brand  for 
a  kind  of  meal  used  for  mush.  Defendant  subsequently  placed  on  the 
market  a  similar  article  marked  "  Golden  Eagle  Germ."  It  was  put  up  in 
packages  of  the  same  size,  shape.,  and  color  as  plaintiff's  a-nd  had  attached 
labels  of  the  same  size  and  shape,  the  words  and  pictures  on  the  labels  being 
in  many  cases  similar,  of  the  same  colors,  and  similarly  arranged.  The  dif- 
ferences consisted  in  the  trade  name,  the  name  of  the  proprietor  and  in 
certain  minor  details.  Plaintiff  held  entitled  to  injunction.  Rains  <&  Sons 
v.  White,  Haucke  &  Co.,  107  Ky.  114-1899;  52  S.  W.  970.  In  1889  plain- 
tiff put  out  a  tobacco  in  12-pound  boxes,  156  twists  to  the  box  or  13  twists 
to  the  pound,  and  it  soon  acquired  a  reputation  under  the  name  "  Rainbow 
Twist."  Defendant  began  in  1893  to  put  tobacco  in  same  12-pound  boxes, 
13  twists  to  the  pound,  156  twists  to  the  box.  They  used  same  wreaths  as 
the  plaintiff  on  their  label,  because  the  printer  had  them  on  hand,  and  marked 
the  label  "  The  Best  Twist,"  etc.  The  general  arrangement  of  the  words 
was  similar  on  both  labels,  "  *  *  *  so  that,  when  the  appellees  had  gotten 
a  box  of  twist  tobacco  on  the  shelf  of  the  retail  dealer  the  result  was  that 
they  had  duplicated  the  '  Rainbow  Twist '  of  their  rivals  in  all  respects 
except  as  to  the  words  on  the  label.  Even  the  arrangement,  size  and  style 
of  the  printing  were  the  same;  the  departure  from  the  appellant's  brand 
consisting  solely  in  substituting  the  word  '  Best  '  for  the  word  '  Rainbow,'  and 
the  words  '  White,  Haucke  &  Co./  for  the  words  '  J.  H.  Rains  &  Sons.'  The 
result  was  confusing  on  the  market,  and  purchasers  who  wanted  '  Rainbow 
Twist*  were  given  the  'Best  Twist'  to  the  pecuniary  disadvantage  of  the 
appellants  and  the  annoyance  of  the  deceived  tobacco  chewer  "  (id.  p.  116). 
Held,  unfair  competition.  Parlett  v.  Guggenheimer,  67  Md.  542-1887;  10 
Atl.  81.     Plaintiffs  sold  tobacco  marked   and  known  as  "  Golden   Crown  " 

"  Fischer  v.  Blanlc,  138  N.  Y.  244-1893 ;  33  N.  E.  1040. 
22 


338  Unfair  Business  Competition. 

and  further  distinguished  by  four  tin  tags  of  a  special  description.  Defend- 
ants sold  tobacco  marked  "  Golden  Chain  "  in  packages  bearing  similar  tin 
tags  and  resembling  plaintiffs'  in  dress  and  appearance.  Plaintiffs  were 
held  entitled  to  an  injunction  and  accounting.  It  was  set  up  in  defense 
that  plaintiffs  had  no  right  to  use  the  words  "  Golden  Crown,"  as  they  had 
long  been  used  as  a  trade-mark  by  one  Palmer.  It  appeared,  however,  that 
Palmer  had,  in  a  Pennsylvania  court,  been  refused  protection  for  the  trade- 
mark claimed  by  him,  on  the  ground  that  he  falsely  represented  his  goods 
to  be  made  in  Havana.  Held,  that  the  defense  was  unavailing.  Centaur 
Co.  v.  Link,  02  N.  J.  Eq.  147-1901;  49  Atl.  828.  The  resemblance  in  dress 
is  thus  described  in  the  opinion :  u  The  compound  of  the  Link  Drug  Com- 
pany is  put  up  in  two-ounce  paneled  bottles,  so  nearly  similar  in  size  and 
appearance  with  those  of  complainant's  as  to  present  no  substantial  dif- 
ference. The  word  '  Castoria '  is  printed  in  similar  and  conspicuous  type, 
the  only  difference  being  the  first  and  last  letters, —  a  difference  not  calcu- 
lated to  attract  attention  —  and  in  the  fact  that  the  name  upon  complainant's 
bottle  is  slightly  curved,  and  in  the  defendant's  bottle  straight  —  this  also 
being  a  difference  which  would  not  arouse  the  attention  of  an  unsuspecting 
purchaser.  Upon  both  is  the  formula  of  Dr.  Pitcher.  Over  the  complain- 
ant's formula  are  the  words  '  Receipt  of  old  Dr.  Pitcher,'  in  small  type, 
and  over  the  formula  of  the  Link  Drug  Company  bottles  '  Formula  of  Old 
Dr.  Pitcher,'  in  large  letters.  The  remainder  of  the  printed  matter  differs 
in  form  and  somewhat  in  substance,  and  upon  the  defendant's  label  is  the 
picture  of  a  bee-hive,  with  the  word  '  trade '  upon  one  side  of  it  and  '  mark ' 
upon  the  other.  On  the  bottom  of  the  complainant's  label  is  the  name  of 
'  Charles  H.  Fletcher,'  in  small  letters.  Upon  the  label  of  the  Link  com- 
pany, in  large  letters,  are  the  words  '  C.  W.  Link  Drug  Co.'  The  label  of 
the  complainant  is  made  of  slightly  tinted  white  paper,  and  that  of  the  Link 
Drug  Company  of  white  paper;  but  unless  placed  together,  the  difference  in 
color  is  not  perceptible  "  (id.  p.  150).  Injunction  granted.  Taendsticksfabriks 
Akticbolagat  Vulcan  v.  Myers,  139  N.  Y.  364-1893 ;  34  N.  E.  904.  A  Swedish 
corporation  made  matches  which  it  put  up  in  boxes  bearing  the  trade-mark 
"  The  Vulcan,"  in  red  letters  over  a  globe,  on  each  side  of  which  were  repre- 
sentations of  various  medals.  The  labels  also  bore  the  words  "  Damp  Proof," 
"  Trade  Mark,"  and  "  Paraffin  Matches."  A  competitor  later  began  to  put 
up  matches  in  boxes  of  the  same  size  having  the  same  general  appearance, 
with  a  label  bearing  in  red  letters  of  the  same  style  the  word  "  Vulture,"  a 
picture  of  a  vulture  with  outspread  wings  and  a  facsimile  of  the  medals 
of  the  Swedish  company ;  also  the  words  "  Damp  Proof,"  "  Trade  Mark " 
and  "  Paraffin  Matches  "  arranged  in  the  same  way  as  upon  the  plaintiff's 
boxes.  The  court  said :  "  The  similarity  between  the  names  employed  and 
the  devices  used ;  the  identity  of  the  medals  represented  and  the  correspond- 
ence of  size,  color  and  general  appearance,  when  combined  upon  the  wrapper 
of  a  box,  are  so  close  and  striking  that  an  intending  purchaser  of  the  plain- 
tiff's goods  would  be  likely  to  be  imposed  upon  if  the  matches  sold  by  de- 
fendant in  these  packages  should  be  offered.     While  competition  is  essential 


Dress  ok  Get-up  of  Goods.  339 

to  the  life  of  commerce  and  is  the  consumer's  main  defense  against  extortion, 
it  should  be  fair  and  honest,  and  the  manufacturer  who  produces  an  article 
of  recognized  excellence  in  the  market,  and  stamps  it  with  the  insignia  of 
his  industry,  integrity  and  skill,  makes  his  trade-mark  a  part  of  his  capital 
in  business,  and  thus  acquires  a  property  right  in  it,  which  a  court  of  equity 
will  protect  against  all  forms  of  commercial  piracy"  (id.  p.  367).  Opper- 
mann  v.  Waterman,  94  Wis.  583-1896;  69  N.  W.  569.  Defendant's  pack- 
ages of  dyes  closely  resembled  plaintiff's  in  size,  shape  and  general  appear- 
ance; defendant's  labels  were  similar  to  the  peculiar  labels  used  by  plaintiff, 
in  the  colors  of  the  ink  and  arrangement  of  printed  matter.  Plaintiff's  dyes 
were  known  as  "  German  Household  Dyes,"  and  defendants  called  theirs 
"  Excellent  German  Household  Dyes."  Held,  unfair  competition.  Bickmore 
Gall  Cure  Co.  v.  Earns,  134  Fed.  833-1905  (C.  C.  A.  3d  Cir.).  The  prin- 
cipal features  of  resemblance  were  the  use  of  the  two  phrases  "  Be  sure  to 
work  the  horse "  and  "Always  work  the  horse  while  using  the  cure ;  "  the 
use  of  two  pictures,  one  of  a  single  working  horse,  the  other  of  four  working 
horses;  the  use  of  boxes  substantially  the  same  size  and  of  exactly  the  same* 
shape,  both  being  of  yellow  or  yellowish  color.  "  The  true  question  is  not 
whether  the  boxes,  circulars,  advertisements  and  directions  of  the  appellees 
are,  in  their  details,  the  same,  or  nearly  the  same,  as  those  of  the  appellant, 
but  whether  the  general  effect  produced  by  those  of  the  appellees  is  such  as 
would  be  likely  to  lead  ordinary  purchasers  to  accept  their  gall  cure  as  being 
that  of  the  appellant"  (id.  p.  835).  It  should  be  noted  that  the  earlier 
trader's  medicine  had  come  to  be  popularly  known  as  the  "  Work  the  Horse  " 
Cure.  In  Devlin  v.  McLeod,  135  Fed.  164^1904  [C.  C.  W.  D.  N.  Y.]  it  was 
said  that  while  the  words  "  Toothache  Gum "  are  not  subject  to  exclusive 
appropriation  as  a  trade-mark,  yet  their  use  by  defendant  in  connection  with 
the  use  of  labels  in  many  ways  similar  to  those  of  complainant,  and  of 
packages  of  about  the  same  size,  called  for  injunctive  relief.  Eostering  v. 
Seattle  Brewing  &  Malting  Co.,  116  Fed.  620-1902  (C.  C.  A.  9th  Cir.). 
Complainant  sold  beer  called  "  Rainier  Beer,"  with  a  label  of  peculiar  color- 
ing and  design.  Defendant  sold  "  Rhinegold  Beer,"  in  bottles  of  the  same 
color  and  shape,  and  with  a  label  of  the  same  size,  the  same  peculiar  coloring, 
and  similar  in  arrangement  and  in  most  of  its  features,  the  differences  being 
mainly  in  the  words  and  the  landscape  views.     This  was  unfair. 

Enoch  Morgan's  Sons  Co.  v.  Whittier-Cobum  Co.,  118  Fed.  657-1902 
(C.  C.  N.  D.  Cal.).  Complainant  and  its  predecessor  had  long  manufac- 
tured a  soap  under  the  trade-mark  and  name  "  Sapolio,"  and  had  put  it  up 
in  a  peculiar  style  of  package.  Defendant  had  been  the  agent  of  com- 
plainant, and  after  the  termination  of  its  agency  began  to  sell  soap  of  the 
same  size  and  shape  as  complainant's,  and  marked  "  W.  C.  Co.'s  Sapho," 
whereas  complainant's  was  marked  "  E.  Morgan's  Sons  N.  Y.,  Sapolio." 
There  was  considerable  resemblance  as  to  color  and  general  appearance  be- 
tween defendants'  wrapper  and  label  and  complainant's.  Held,  unfair  com- 
petition. Moxie  Nerve  Food  Co.  v.  Baumbacli,  32  Fed.  205-1SS7  (C.  C. 
E.    D.    Tex.).      Complainant    used    a    trade-mark    consisting    of    the    word 


340  Unfair  Business  Competition. 

*'  Moxie,"  with  a  label  bearing  a  certain  design  and  other  descriptive  words. 
He  sold  a  beverage  known  as  "  Moxie  Nerve  Food,"  put  up  in  a  champagne 
bottle  -with  a  light-brown  wrapper.  Defendant  afterward  began  to  sell  a 
beverage  of  similar  appearance  and  taste,  put  up  in  a  champagne  bottle, 
with  a  label  and  wrapper  sufficiently  resembling  complainant's  to  deceive 
the  unwary  purchaser.  This  bottle  was  marked  "  Standard  Nerve  Food." 
Injunction  issued.  Jennings  v.  Johnson,  37  Fed.  364-1888  (C.  C.  Me.). 
Plaintiff  and  his  predecessors  had  long  sold  "  Johnson's  Anodyne  Liniment " 
in  bottles  with  blue  wrappers  and  labels  bearing  a  facsimile  of  the  name 
"A.  Johnson."  Defendant  then  put  on  the  market  what  he  also  called 
"  Johnson's  Anodyne  Liniment,"  in  bottles  of  the  same  size,  with  a  similar 
blue  wrapper  and  a  label  of  similar  appearance,  though  of  slightly  differ- 
ing color,  with  a  facsimile  of  the  name  "  F.  E.  Johnson."  There  was  proof 
of  actual  deception.  Injunction  granted.  Myers  v.  Theller,  38  Fed.  607- 
1889  (C.  C.  S.  D.  N.  Y.).  Complainants  made  and  sold,  in  bottles  of 
peculiar  shape  "  Hostetter's  Stomach  Bitters."  The  label  bore  a  representa- 
tion of  St.  George  and  the  dragon,  a  black  shield,  the  words  "  Hostetter's 
Celebrated  Stomach  Bitters,"  and  some  additional  matter.  Defendants  put 
upon  the  market  an  article  of  their  own,  in  bottles  of  the  same  color  and 
peculiar  shape  as  complainant's,  and  bottles  with  the  words  "  Theller's  Cele- 
brated Stomach  Bitters,"  a  monogram  of  the  letters  "A.  T."  in  place  of 
St.  George  and  the  dragon,  and  a  black  shield  resembling  that  on  com- 
plainant's. Otherwise  there  were  resemblance  and  also  points  of  difference 
between  the  labels.  Held,  unfair  competition.  Klotz  v.  Hecht,  73  Fed.  822- 
1896  (C.  C.  S.  D.  N.  Y.).  Complainant  was  the  successor  of  a  famous 
Parisian  manufacturer  of  toilet,  articles,  and  continued  the  business  under 
the  old  trade-names  "  Ed.  Pinaud "  and  "  Parfumerie  Ed.  Pinaud."  De- 
fendant, who  had  been  employed  by  complainant,  then  began  to  sell  similar 
goods,  which  although  made  in  the  United  States,  bore  labels  in  French, 
and  were  so  put  up  as  to  give  the  impression  that  the  goods  were  French. 
One  label  indicated  that  the  contents  were  prepared  by  "  M.  Hecht,  lately 
with"  ( those  words  being  in  French)  "  Parfumerie  Ed.  Pinaud,  Paris."  There 
was  also  blown  into  the  glass  a  design  resembling  one  blown  into  com- 
plainant's bottles.  An  injunction  was  granted.  C.  F.  Simmons  Medicine 
Co.  v.  Simmons,  81  Fed.  163-1897  (C.  C.  Ark.).  Defendant  made  and  sold 
a  medicine  under  a  name  similar  to  that  of  complainant's  medicine,  including 
the  name  of  his  father,  the  inventor,  who  had  transferred  all  rights  in  the 
medicine  to  the  predecessor  of  complainant.  Defendant  advertised  himself 
as  the  son  of  the  inventor,  and  as  having  been  brought  up  in  his  laboratory. 
His  packages  resembled  complainant's  in  various  ways,  such  as  the  portrait, 
autograph  signature,  arrangement  of  words,  and  directions  for  using.  The 
medicine  was  used  largely  by  ignorant  and  illiterate  persons.  Held,  unfair 
competition.  Franck  v.  Frank  Chicory  Co.,  95  Fed.  818-1899  (C.  C.  E.  D. 
Wis.).  Complainants  were  the  American  branch  of  a  German  firm  that  had 
long  made  and  sold  chicory  as  a  substitute  for  coffee.  Their  product,  put 
up   in   red   packages   of   cylindrical   shape,   was   somewhat   popular  in   the 


Dress  or  Get-up  of  Goods.  341 

vicinity  of  Milwaukee.  Defendant's  company  was  afterward  organized  and 
made  and  sold,  in  the  neighborhood  of  Milwaukee,  a  similar  product,  put  up 
in  packages  of  similar  shape  and  color,  with  labels  of  similar  design,  bearing 
the  name  "  Frank  Chicory  Co."  The  name  Frank  was  afterward  withdrawn. 
Held,  unfair  competition.  Injunction  granted  against  the  use  of  the  same 
color  as  well  as  against  the  use  of  a  similar  label  and  the  name  "  Frank." 
Liebig's  Extract  of  Meat  Co.,  Ltd.  v.  Libby,  McNeill  &  Libby,  103  Fed.  87- 
1900  (C.  C.  N.  D.  111.).  The  complainant  had  possessed  a  trade  in  its 
product  for  more  than  thirty  years,  and  for  many  years  its  trade  had  been 
of  great  extent,  aided  by  large  expenditures  for  advertising.  The  defend- 
ant entered  the  market  with  an  extract  well  distinguished  in  the  marking 
and  color  of  the  package,  but  subsequently  adopted  a  dress  for  its  goods 
which  clearly  simulated  that  of  the  complainant,  and  was  calculated  to  de- 
ceive. It  assumed  the  fictitious  title  of  "  Liebig  Fluid  Beef  Co."  with  a 
label  stamped  in  blue  "  J.  Walker,"  and  the  color  and  general  appearances 
of  the  packages  closely  resembling  that  of  complainant.  Held,  that  taking 
all  the  circumstances,  it  was  evident  that  deception  was  both  intended  and 
liable  to  arise  in  palming  off  the  goods  upon  ultimate  purchasers  as  those 
of  the  complainant. 

IV.  Cases  Involving  a  General  Resemblance  and  also  a  Like- 
ness in  the  Names  Used  in  Which  Relief  was  Denied. 

Proctor  &  Gamble  Co.  v.  Globe  Refining  Co.,  92  Fed.  357-1899  (C.  C.  A. 
6th  Cir.).  Complainant  manufactured  soap  which  it  sold  in  packages  having 
a  yellow  wrapper,  on  one  side  of  which  was  printed  in  black  letters  the 
words  "  Every  Day  Soap,"  together  with  the  name  and  location  of  the 
maker.  There  was  also  a  small  circular  figure  containing  a  representation  of 
a  moon  and  stars  on  a  black  ground.  Defendant  put  up  its  soap  in  pack- 
ages of  similar  size  and  shape,  having  a  yellow  wrapper,  on  one  face  of 
which  was  a  black  ground  containing  only  the  words  "  Everybody's  Soap  " 
in  letters  formed  by  the  yellow  paper  of  the  wrapper  showing  through  the 
black  field  of  the  label.  The  print  and  figures  displayed  on  the  sides  and 
back  of  the  wrapper  bore  no  resemblance  to  anything  on  complainant's,  and 
the  name  and  location  of  the  maker  were  conspicuously  shown  on  one  side 
of  the  package.  This  statement  of  the  case  is  taken  from  the  head-note. 
Held,  that  an  order  refusing  complainant  a  preliminary  injunction  would  not 
be  disturbed.  Postum  Cereal  Co.,  Ltd.  v.  American  Health  Food  Co.,  lift 
Fed.  84S-1902;  56  C.  C.  A.  360  (C.  C.  A.  7th  Cir.).  Complainant's  cereal 
product  was  put  up  in  a  package  with  a  yellow  label  containing  general 
printed  matter,  the  conspicuous  words  being  "  Grape-nuts,"  the  trade-mark 
or  trade-name  printed  on  a  horizontal  black  or  dark-blue  band,  in  yellow  let- 
ters. Defendant's  cereal  was  put  up  in  a  package  of  the  same  size  and  shape, 
with  a  label  of  the  same  size  of  a  slightly  lighter  shade  of  yellow.  There  was 
a  good  deal  of  difference  in  the  printed  matter,  and  the  prominent  words  were 
"  Grain-Hearts,"  printed  in  white  letters  on  a  blue  band  running  obliquely 


342  Unfair  Business  Competition. 

across  a  large  red  heart,  a  feature  which  corresponded  to  nothing  in  com- 
plainant's label.  The  size  of  package  and  the  color  of  label  were  both  in 
common  use  for  cereals  or  breakfast,  foods.  There  was  no  proof  of  actual 
deception.  Held,  no  infringement  of  trade-mark  nor  unfair  competition. 
Gessler  v.  Grieb,  SO  Wis.  21-1891 ;  48  N.  W.  1098.  Plaintiff  sold  medicine 
in  boxes  labeled  "  Gessler's  Magic  Headache  "Wafers,"  with  directions  for 
use,  etc.,  and  the  manufacturer's  name  and  address.  Defendant  sold  medi- 
cine in  similar  boxes,  wrapped,  however,  in  paper  of  a  different  color,  and 
labeled  "  Brown's  Alpha  Headache  Wafers,"  with  similar  directions,  and  a 
different  name  and  address  as  those  of  the  manufacturer.  Held,  no  in- 
fringement, and  no  grounds  for  injunction.  Solis  Cigar  Co.  v.  Pozo,  16 
Colo.  388-1891;  20  Pac.  550.  Parties  were  both  makers  of  cigars  at  Denver. 
Their  labels  contained  several  words  and  designs  often  used  on  such  labels, 
such  as  the  picture  of  a  tobacco  plant,  and  the  words  "  Fabrica  Tobacos " 
and  "  Habana."  The  name  or  brand  on  complainant's  label  was  "  El  Cabio," 
while  the  name  on  defendant's  label  (adopted  subsequently  to  complainant's) 
was  "  El  Cavio."  The  type  on  the  two  labels,  however,  and  the  details  in 
the  pictures  were  quite  dissimilar,  and  the  name  of  the  manufacturer  was 
printed  conspicuously  after  the  name  of  the  brand,  "  De  R.  Solis  "  on  one 
label,  and  "  De  Pozo  and  Suarez "  on  the  other.  No  actual  deception  of 
purchasers  was  shown.  Held,  no  infringement.  In  Packham  &  Co.,  Ltd.  v. 
Sturgess  &  Co.,  15  R.  P.  C.  669-1898,  the  get-up  of  the  goods  was  held 
not  to  be  sufficiently  close  to  make  deception  probable  (in  spite  of  the 
identity  of  name,  the  goods  of  each  party  being  called  "  Sparkling  Lime 
Wine"). 

V.  Cases  Involving  no  Similarity  in  Names,  but  a  Resem- 
blance in  General  Appearance  Amounting  to  Unfair  Com- 
petition.—  Cases  of  this  sort  have  long  been  held  to  be  un- 
fair. As  early  as  1849  it  was  held,  that  sale  of  "  Ohio  Lini- 
ment "  in  bottles  and  with  labels  very  similar  to  those  used 
to  market  "  Chinese  Liniment  "  was  not  proper.66 

The  presence  of  a  name  on  a  label,  even  when  showing  dis- 
tinctly, will  not  excuse  or  justify  a  similarity  of  get-up  in  other 
Tespects.  This  fact  may  sometimes  increase  the  liability  to 
injury,  for  people  familiar  in  a  general  way  with  the  plain- 
tiff's device  as  marking  its  particular  brand,  and  subsequently 
seeing  a  similar  label  on  similar  goods,  but  bearing  defendant's 
name,  might  readily  forget  plaintiff's  name,  and  infer  that  de- 
fendant was  the  manufacturer  of  the  goods  associated  in  their 
minds  with  that  kind  of  a  seal,  and  so  be  led  to  order  from  him 

*  Coffeen    v.    Brunton,    4    McLean  516-1849 ;  Fed.  Cas.  2946. 


Dress  or  Get-up  of  Goods.  343 

under  the  impression  that  he  manufactured  the  brand  which 
was  in  fact  made  by  the  plaintiff.67 

N.  K.  Fairbank  Co.  v.  R.  W.  Bell  Mfg.  Co.,  77  Fed.  869-1896.  Com- 
plainant manufactured  soap  powder  of  a  yellow  color  and  devised  a  dis- 
tinctive yellow  package,  bearing  the  words  "  Gold  Dust  "  and  "  Washing 
Powder,"  together  with  the  makers'  name  and  numerous  indicia  and  directions 
upon  the  various  panels.  After  complainant  had  advertised  and  sold  the 
powder  for  two  or  three  years,  defendant  company  began  manufacturing  a 
yellow  washing  powder,  which  it  styled  "  Buffalo  Powder,"  put  up  in  pack- 
ages of  the  same  size  as  complainant's,  using  a  yellow  wrapper,  but  making 
numerous  changes  in  its  indicia,  all  of  which  constituted  an  approach  to  those 
used  by  complainant.  Held,  that  notwithstanding  that  the  word  "  Buffalo," 
together  with  the  defendant's  name  on  the  package,  was  distinctive,  there 
was  a  simulation  of  complainant's  package  which  entitled  complainant  to 
an  injunction  restraining  the  sale  of  that  particular  form  of  package,  "  or 
any  other  form  which  should,  by  reason  of  the  collocation  of  size,  shape, 
coloring,  lettering,  spacing  and  ornamentation,  present  a  general  appearance 
as  closely  resembling  complainant's  packages  as  the  one  complained  of;  but 
that  a  clause  should  be  added  to  the  effect  that  the  injunction  should  not 
be  construed  as  preventing  the  sale  of  packages  of  the  size,  weight,  shape, 
or  color  of  complainant's  packages  provided  that  they  were  so  differentiated 
in  general  appearance  as  not  to  be  calculated  to  deceive  the  ordinary  pur- 
chaser"  (from  head-note).  Even  though  the  court  is  satisfied  that  a  new 
form  of  package  was  devised  by  defendant,  with  an  intent  to  simulate  com- 
plainant's package,  the  continued  use  of  such  package  will  not  be  enjoined 
unless  the  similarity  is  of  a  character  to  convey  a  false  impression  to  the 
public  mind,  and  to  mislead  and  deceive  an  ordinary  purchaser  exercising 
ordinary  care,  but  in  applying  the  test  of  likelihood  of  deception  of  an 
ordinary  purchaser  exercising  ordinary  care  regard  must  be  had  to  the  class 
of  persons  who  purchase  the  particular  article  for  consumption,  and  to  the 
circumstances  ordinarily  attending  their  purchase.  Defendant's  packages  of 
soap  powder  were  of  the  same  size  and  form  as  plaintiff's,  and  wrapped  in 
paper  of  the  same  color,  the  labels  also  were  similar  in  their  combination 
of  colors  and  arrangement  and  appearance  of  printed  matter.  Actual  decep- 
tion was  shown.  Held,  unfair  competition.  Hildreth  v.  McDonald  Co.,  164 
Mass.  16-1S95;  41  N.  E.  56.  Plaintiff  made  molasses  candy  in  pieces  of  a 
certain  size  and  wrapped  them  in  papers  with  twisted  ends  and  printed  the 
word  "  Velvet "  in  red  script  upon  the  middle  and  ends  of  the  wrappers. 
Others  had  used  the  same  method  of  wrapping  candy,  but  had  not  used 
the  word  "  Velvet."  The  defendant  used  the  same  combination  of  size  and 
shape  of  candy  and  the  same  kind  and  size  of  paper  and  manner  of  wrap- 
ping, all  of  which  it  was  held  it  had  a  right  to  do.    But  it  also  printed  the 

"Moxley  v.  Braun,  93  111.  App.  189-1900. 


344  Unfair  Business  Competition. 

■word  "  McDonald  "  upon  its  wrappers,  but  in  Roman  letters  instead  of 
script  and  upon  the  middle  of  the  wrappers  only  (not  on  the  ends).  The 
court  enjoined  the  printing  of  the  red  letters  upon  its  wrappers  by  defend- 
ants, considering  that  this,  in  connection  with  the  other  resemblances,  tended 
to  deceive  the  public.  McCann  v.  Anthony,  21  Mo.  App.  83-1886.  The 
plaintiff  for  a  long  time  had  made  "  Old  Coon  Smoking  Tobacco,"  and  for 
years  the  defendant  had  made  "  Old  Bachelor  Smoking  Tobacco."  In  1883 
the  plaintiff  began  to  put  up  "  Old  Coon  "  in  cloth  bags,  having  formerly 
used  paj)er  bags.  In  the  fall  of  the  same  year  defendant  began  putting  up 
"  Old  Bachelor  "  in  cloth  bags  of  the  same  size,  and  at  the  same  time  changed 
his  label,  -which  before  had  not  been  at  all  like  the  labels  of  the  plaintiff, 
to  a  label  similar  to  plaintiff's  in  form,  size  and  color.  On  the  plaintiff  pro- 
testing against  this  defendant  added  to  his  label  the  words  "  Not  Old  Coon." 
Two  witnesses  testified  that  they  had  been  deceived  by  defendant's  label. 
The  court  here  says :  "  The  governing  principle  is  that  one  manufacturer 
shall  not  be  allowed  to  impose  his  goods  upon  the  public  as  the  goods  of 
another  manufacturer  and  so  derive  a  profit  from  the  reputation  of  the  other. 
It  is  not  necessary  that  the  trade-mark,  trade  name,  sign,  label,  or  other 
device  which  is  employed  by  one  merchant  for  that  purpose  shall  be  an 
exact  imitation  or  counterfeit  of  the  trade-mark,  trade  name,  sign,  label,  or 
other  device  employed  by  the  other  manufacturer.  Nor  is  it  required  that 
the  imitation  be  so  close  as  to  deceive  cautious  and  prudent,  persons;  it  is 
sufficient  that  it  be  so  close  as  to  deceive  the  incautious  and  unwary,  and 
thereby  work  substantial  injury  to  the  other  manufacturer"  (id.  p.  89). 
Held,  that  the  use  of  the  words  "  Not  Old  Coon  "  did  not  sufficiently 
differentiate,  in  view  of  the  close  similarity  in  general  appearance.  County 
Chemical  Co.  v.  Frankenburg,  21  R.  P.  C.  722-1904.  Plaintiff,  in  January, 
1902,  began  to  sell  in  a  green  oblong  box  repair  kits  for  pneumatic  tires. 
The  boxes  bore  a  label  covering  nearly  whole  of  top  of  lid,  had  background 
of  gold  with  slight  green  dots,  and  wrords  "  Chemico  Repair  Outfit,  complete 
with  the  best  materials  for  the  repairs  of  Pneumatic  Tyres."  .  In  October, 
1902,  defendant  got  from  the  maker  of  plaintiff's  labels  samples  of  boxes 
for  repair  outfits,  among  which  was  plaintiff's,  and  then  ordered  a  large 
quantity  to  be  "  Exactly  like  plaintiff's  in  color  and  style  of  printing,"  and 
used  "  Triumph  "  instead  of  "  Chemico  "  as  a  name,  and  instead  of  words 
"  The  County  Chemical  Company  Ltd.,  Excelsior  Works,  Birmingham,"  de- 
fendant ordered  that  his  box  should  bear  words  "  manufactured  in  Birming- 
ham." The  output  was  inferior  to  plaintiff's.  In  July,  1903,  plaintiff  dis- 
covered the  operations  of  defendant  and  began  suit  in  January,  1904.  Held, 
that  plaintiff  was  entitled  to  an  injunction,  but  not  to  an  order  for  the 
destruction  of  defendant's  boxes  and  their  delivery  to  him,  in  view  of  his 
laches  in  delaying  six  months.  "  From  July  to  December  they  slept  on 
their  rights." 


Dkess  or  Get-up  of  Goods.  345 

VI.  Cases  not  Involving  a  Name,  in  Which  the  General  Like- 
ness in  Get-up  is  not  Close  Enough  to  be  Unfair. 

Philadelphia  Novelty  Mfg.  Co.  v.  Roues,  40  Fed.  585-1889  (C.  C.  S.  D. 
N.  Y.).  The  resemblance  between  defendant's  package  and  complainant's 
consisted  in  similarity  of  color  of  boxes  and  wrappers,  and  in  the  labels 
being  white  with  a  woman's  head  in  the  center.  There  were  marked  dif- 
ferences in  the  size  or  weight  of  the  packages,  the  words  on  the  labels 
and  otherwise.  Held,  no  deceptive  simulation.  Continental  Tobacco  Co.  v. 
Larus  &  Brothers  Co.,  133  Fed.  727-1904  (C.  C.  A.  4th  Cir.).  Defendant's 
plug  tobacco  was  put  up  in  a  way  somewhat  similar  to  complainant's,  includ- 
ing the  use  of  a  tag  of  similar  size  and  color,  though  the  printed  matter  on 
the  tag  was  entirely  different.  The  method  of  putting  up  the  tobacco,  how- 
ever, was  largely  the  same  as  that  followed  by  the  trade  in  general,  and  not 
peculiar  to  the  parties.  Held,  that  no  unfair  competition  was  shown.  Heinz 
v.  Lutz  Bros.,  146  Pa.  St.  592-1891 ;  23  Atl.  314.  Suit  to  enjoin  defendant 
from  using  on  fruit  preserves  and  similar  goods  a  label  alleged  to  resemble 
plaintiff's  sufficiently  to  mislead  the  public.  The  words  on  the  labels  were 
•wholly  different,  but  there  was  some  similarity  in  the  colors  and  arrangement 
of  the  fruits  depicted.  Held,  that  defendant's  label  was  not  likely  to  de- 
ceive a  purchaser  of  ordinary  intelligence.  Injunction  denied.  In  such  a 
case  the  possibility  of  deception  is  not  enough;  it  must  appear  probable  that 
persons  of  ordinary  intelligence  using  ordinary  care  would  be  deceived,  and 
the  fact  that  after  the  lapse  of  considerable  time  no  one  appears  actually  to 
have  been  deceived  is  strong  evidence  that  there  is  no  probability  of  decep- 
tion, liadam  v.  Capital  Microbe  Destroyer  Co.,  SI  Tex.  122-1891;  1(5  S.  W. 
990.  The  use  by  defendant,  in  selling  a  patent  medicine,  of  jugs  similar  in 
size  and  color,  with  some  similarity,  but  other  marked  points  of  difference  in 
the  lables,  held,  not  to  amount  to  unfair  competition.  The  resemblance 
must  be  sufficient  to  deceive  a  purchaser  of  ordinary  care.  King  &  Co., 
Ltd.  v.  Gillard  &  Co.,  Ltd.,  22  R.  P.  C.  327-1905;  affirming  21  R.  P.  C.  589. 
Plaintiff  had  long  made  and  sold  certain  preparations  of  dried  materials  for 
soups.  Defendant  began  to  make  and  sell  similar  preparations,  put  up  in 
packets  and  boxes  of  similar  forms  and  sizes,  and  with  labels  somewhat 
resembling  plaintiff's  in  design  and  appearance,  but  in  different  colors  and 
with  the  defendant's  name  "  Gillard's  "  in  place  of  "  Edwards',"  the  name 
used  by  plaintiff.  Held,  that  the  resemblance  was  not,  sufficiently  close  to 
amount  to  fraudulent  or  deceptive  simulation.  Schweppes,  Ltd.  v.  Gibbens, 
22  R.  P.  C.  601-1905.  Plaintiff  sold  soda  water  in  bottles  with  a  neck  label 
of  chocolate  color  and  white  border,  with  a  red  medallion  in  the  center. 
The  label  bore  the  maker's  name.  Defendant  afterward  began  to  sell  soda 
water  in  bottles  bearing  a  label  of  similar  color  and  border,  and  with  a  red 
medallion  in  the  center,  tie  words,  however,  being  different,  giving  defend- 
ant's name  conspicuously,  and  the  red  medallion  bearing  her  trade-mark,  the 
figure  of  a  man,  instead  of  the  fountain  trade-mark  printed  on  the  medallion 


346  Unfair  Business  Competition. 

of  plaintiff's  label.  Defendant  only  used  one  label  on  her  bottles,  while 
plaintiff  used  two,  and  there  was  some  difference  in  size  and  shape  of 
bottles.    Held,  that  defendant's  labels  were  not  calculated  to  mislead. 

Under  the  general  head  of  imitation  of  dress,  or  general  ap^ 
pearanee,  should  also  be  placed  a  few  cases  involving  miscel- 
laneous features  imitated  that  are  somewhat  sui  generis,  in- 
volving imitation  in  such  particulars  as  the  card  for  hooks  and 
eyes,  the  flag  of  an  auctioneer,  the  title  of  a  popular  song,  the 
capsule  of  a  bottle,  etc.  For  instance  in  De  Long  Hook  &  Eye 
Co.  v.  Excelsior  Hook  &  Eye  &  Fastener  Co.,  139  Fed.  146- 
1905  (C.  C.  W.  D.  N.  Y.),  the  cards  to  which  defendant's  hooks 
and  eyes  were  attached  closely  resembled  complainant's  in 
size,  color,  spacing,  manner  of  printing,  and  mode  of  attach- 
ing the  eyes  to  the  cards,  but  differed  in  the  printed  words. 
Held,  a  simulation  amounting  to  unfair  competition.  See 
also  this  case  on  appeal,  144  Fed.  682. 


CHAPTER  XIII. 

Interference  With  a  Competitor's  Contracts  and  Business 

Generally. 

Section  174.  Action  at  common  law  based  only  on  injury  to  one's  trade  or 
business. 

175.  Malice. 

176.  Interference  with  business  generally. 

177.  Interference  with  contracts  by  third  person,  enjoined. 

178.  Interference  with  contracts  with  servants. 

179.  Lumley  v.  Gye  and  later  cases. 

180.  Causing  bi'each  of  contracts  for  furnishing  information. 

181.  Causing   breach    of   passengers'    contract    with    transportation 

companies. 

182.  Summary. 

183.  What  constitutes  interference  with  contract. 

184.  Ignorance  of  the  existence  of  the  contract  is  no  defense  against 

an  injunction. 

185.  Procuring  breach  of  contract  not  to  re-enter  business. 

186.  Position  of  the  New  York  courts  on  this  rule. 

187.  Conditional    contracts  —  Inducing    breach    of   manufacturer's 

contracts  with  retailers. 

188.  Inducing  breach  of  contracts  for  sale  of  goods  made  by  secret 

process. 

189.  What    interference    with    contractual    relations    in    general    is 

legitimate. 

190.  Interference  with  a  competitor's  business  generally. 

191.  Interference  with  salesman  of  a  competitor. 

192.  Interference  by  false  representations  to  customers. 

193.  Interference  by  bringing  a  multiplicity  of  suits. 

It  has  long  been  a  recognized  principle  of  common  law  that 
the  prevention  and  curbing  of  competition  is  an  unlawful  act. 
The  restriction  of  the  freedom  of  trade  is  considered  to  be 
against  public  policy,  and  injurious  to  general  welfare.1 
During  the  past  few  years  there  has  been  a  growing  demand 
made  on  courts  and  legislatures  that  they  take  measures  to 
limit  the  freedom  of  competition  of  the  so-called  trusts  and  also 
that  they  take  other  measures  to  give  the  small  dealer  larger 

1  People  v.  Sheldon,  139  N.  Y.  251. 

[347] 


348  I'm  fair  Business  Competition. 

protection  and  freedom  in  competition.  All  these  demands 
are  made  for  the  benefit  of  those  who  are  not  able  to  cope  with 
the  great  powers  of  the  commercial  world  that  have  come  into 
existence  nnder  the  law  as  it  now  exists.  These  demands  are 
socialistic  in  their  nature.  Freedom  of  competition,  under 
modern  conditions,2  seems  to  lead  to  monopoly,—  the  very  evil 
which  the  common  law  sought  to  avoid.  This  condition  has 
been  reached,  in  part,  by  the  application  of  the  very  rules  laid 
down  by  the  common  law  to  prevent  monopoly. 

The  discussion  of  these  questions  by  the  courts  is  to  be 
found  largely  in  cases  dealing  (a)  with  the  right  which  it  is 
claimed  every  man  has  to  carry  on  his  trade  or  calling  without 
molestation  or  interruption, —  cases  dealing  principally  with 
rights  of  labor  organizations  as  to  boycott,  strikes,  lockouts, 
etc.;  (b)  with  the  right  of  persons  under  contract  with  each 
other  as  against  one  who  intentionally  causes  a  breach  of  that 
contract.  Cases  of  this  sort  are  not  usually  classed  as  unfair 
competition  cases,  but  the  principles  involved  in  them  go 
straight  to  the  question  of  fairness  and  honesty  in  business 
competition.  If  the  limits  to  the  right  of  one  merchant  to  in- 
terfere with,  to  block,  harass,  and  injure  the  trade  of  a  com- 
petitor are  not  defined  clearly,  it  means  that  the  freedom  of  use 
of  capital  in  commercial  enterprises  will  be  hampered  and  re- 
stricted unnecessarily.  If  the  business  world  is  not  certain  of 
its  rights  as  against  those  who  intentionally  and  wrongfully 
procure  the  breaking  of  contracts  for  their  own  gain,  public 
confidence  in  the  binding  force  of  contracts  which  is  now  none 
too  strong  will  be  weakened. 

Here  again  the  extension  of  the  application  of  the  writ 
of  injunction  is  demanded  and  opposed  by  the  contending 
forces,  for  by  far  the  most  effective  weapon  against  him  who 
interferes  with  business  or  sets  out  to  effect  a  breaking  of 
contracts  to  which  he  is  not  a  party,  is  the  quick  relief  that  is 
afforded  by  this  writ. 

First,  then,  let  us  ask  if  at  common  law  there  existed  a  right 
of  action  on  the  complaint  of  one  who  had  been  or  was  be- 
ing injured  in  his  trade,  business,  or  calling  against  the  one 

1  Mogul  88.  Co.  v.  McGregor,  23  December,  1906.  "New  Natural 
Q.    B.    D.    59S.      Atlantic    Monthly,      Forces  and  the  Old  Law." 


Interference  With  a  Competitor's  Contracts,  Etc.     349 

causing  the  injury,  simply  because  the  injury  was  to  his  means 
of  earning  his  livelihood. 

§  174.  Action  at  Common  Law  Based  Only  on  Injury  to 
One's  Trade  or  Business. —  One  of  the  earliest  cases  and  one 
on  the  interpretation  of  which  much  of  the  discussion  of  this 
subject  has  turned,  is  Keeble  v.  Hickeringill,3  (an  action  upon 
the  case)  decided  in  1707  by  Sir  John  Holt,  who  is  known  to 
every  lawyer  through  his  decisions  relating  to  bailments.  The 
facts  were  these :  Plaintiff  owned  a  decoy  pond  and  put  upon 
it  decoy-ducks,  nets,  etc.,  for  taking  fowl.  "  The  defendant, 
knowing  which  and  intending  to  damnify  the  plaintiff  in  his 
vivary  and  to  fright  and  drive  away  the  wild  fowl  used  to 
resort  thither,  and  deprive  him  of  his  profit,  did  *  *  * 
resort  to  the  head  of  said  pond  and  vivary,  and  did  discharge 
six  guns  laden  with  gunpowder,  and  with  the  noise  and  stink 
of  the  gunpowder  did  drive  away  the  wild  fowl  then  being  in 
the  pond;  and  *  *  *  the  defendant,  with  design  to 
damnify  the  plaintiff,  *  *  *  did  place  himself  with  a 
gun  near  the  vivary  and  there  did  discharge  the  said  gun  sev- 
eral times  that  was  then  charged  with  the  gunpowder  against 
the  said  decoy  pond,  whereby  the  wild  fowl  were  frighted 
away  and  did  forsake  the  said  pond."    Verdict  for  plaintiff. 

Holt,  J.,  held,  that  (1)  "  Making  a  decoy  is  lawful;  (2)  using 
ground  for  that  purpose  is  profitable  for  plaintiff.  As  to  the 
first,  every  man  that  hath  a  property  may  employ  it  for  his 
pleasure  and  profit  as  for  alluring  and  procuring  decoy  ducks 
to  come  to  his  pond.  To  learn  the  trade  of  seducing  other 
ducks  to  come  there  in  order  to  be  taken  is  not  prohibited 
either  by  the  law  of  the  land  or  the  moral  law.  *  *  *  "When 
a  man  useth  his  art  or  his  skill  to  take  them,  to  sell  and  dis- 
pose of  for  his  profit,  this  is  his  trade;  and  he  that  hinders 
another  in  his  trade  or  livelihood  is  liable  to  an  action  for  so 
hindering  him.  *  *  *  Why  otherwise  are  scandalous  words 
spoken  of  a  man  in  his  profession  actionable,  when  without  his 
profession  they  are  not  so?  Though  they  do  not  effect  any 
damage,  yet  they  are  mischievous  in  themselves  and  therefore 
in  their  own  nature  productive  of  damage;  and  therefore  an 
action  lies  against  him.    Such  are  all  words  that  are  spoken  of 

3 11  East  574  note. 


350  Unfair  Business  Competition. 

a  man  to  disparage  him  in  his  trade  that  may  bring  damage  to 
him.  *     *     How  much  more  when  the  defendant  doth  an 

actual  and  real  damage  to  another  when  he  is  in  the  very  act  of 
receiving  profit  by  his  employment.  *  *  *  Where  a  violent 
or  malicious  act  is  done  to  man's  occupation,  profession,  or 
way  of  getting  a  livelihood,  there  an  action  lies  in  all  cases. 
But  if  a  man  doth  him  damage  by  using  the  same  employment, 
as  if  Mr.  Hickeringill  had  set  up  another  decoy  on  his  own 
ground  near  the  plaintiff's,  and  that  had  spoiled  the  custom  of 
the  plaintiff,  no  action  would  lie,  because  he  had  as  much  liberty 
to  make  and  use  a  decoy  as  the  plaintiff." 

Whether  or  not  this  case  is  of  sufficient  authority  to  warrant 
saying  that  an  action  did  exist  at  common  law  on  account  of 
injury  to  a  man  in  his  trade  or  calling,  it  must  be  admitted  that 
to-day  there  is  an  increasing  demand  that  the  law  furnish  some 
remedy  against  wrongs  which  deprive  a  man  of  his  trade  and 
its  profits,  and  which  interfere  with  his  business,  where  such 
acts  are  done  unfairly.  Freedom  of  competition,  and  freedom 
of  the  right  to  contract  have  ever  been  stoutly  defended  by  the 
common  law,  and  many  courts  have  turned  to  the  Keeble  case 
as  giving  the  foundation  for  allowing  an  action  which  modern 
conditions  seem  to  render  essential  to  the  administration  of 
justice. 

This  case  was  fully  discussed  in  Allen  v.  Flood,4hy  the  House 
of  Lords.  Lord  Davey  there  says  (p.  173) :  "  That,  in  every 
case  where  such  an  action  has  been  allowed  in  England,  there 
has  been  either  violence  or  the  threat  of  violence,  obstruction 
of  the  highway  or  the  access  to  the  plaintiff's  premises,  nui- 
sance, or  other  unlawful  acts  done  to  the  damage  of  the  plain- 
tiff; and  he  continues  to  argue,  as  does  Lord  Herschell,  that 
there  can  hardly  be  such  an  action  because  no  instance  of  it  is 
found,  other  than  Keeble  v.  Hickeringill,5  Carrington  v.  Tay- 
lor,6 and  Ibbotson  v.  Peat.7 

Lord  Watson  takes  up  the  illustrations  used  by  Sir  John  Holt 
in  that  case,  viz.:  (1)  Scaring  children  on  way  to  school  with 
guns  to  the  loss  of  the  pupils  and  schoolmaster;  (2)  obstruc- 
tion of  one  taking  a  horse  to  market,  to  the  loss  of  the  owner ; 

4  App.  Cas.  1-1898.  *  11  East  571. 

0 11  East  574;  Holt  14.  '  3  H.  &  C.  644. 


Interference  With  a  Competitor's  Contracts,  Etc.     351 

(3)  frightening  away  tenants  at  will;  (4)  beating  a  servant; 
and  says  that,  "  apart  from  any  question  of  motive  all  these 
cases  involve  the  use  of  means  in  themselves  illegal  —  obstruc- 
tion, coercion  by  means  of  threats  and  personal  assault.8 
This  observation,  while  based  somewhat  on  assumption,  does 
not  seem  to  nullify  the  authority  of  the  Keeble  case  itself, 
in  which  there  was  no  illegal  or  violent  act,  and  these  conclu- 
sions are  exactly  contrary  to  those  of  Lord  Halsbury.9 

Lord  Herschell  contends  that  the  fact  that  the  plaintiff 
traded  in  ducks  —  made  duck  decoying  his  business  —  did 
not  change  the  right  of  the  defendant  to  shoot  on  his  own 
land.10  He  declines  to  entertain  any  distinction  between  an 
injury  inflicted  upon  a  man's  trade  and  injuries  of  other 
sorts.  He  admits  everyone  has  a  right  to  pursue  his  trade 
or  calling  without  molestation,  but  only  as  a  part  of  the 
larger  principle  that  all  may  do  lawful  acts  without  molesta- 
tion. He  considers  the  statement  in  the  Mogul  Steamship 
Company  case,  to  the  effect  that  "  intentionally  to  do  that 
which  is  calculated  in  the  ordinary  course  of  events  to  damage, 
and  which  does  in  fact  damage  another  in  that  other  person's 
property  or  trade  is  actionable,  if  done  without  just  cause  or 
excuse,"  is  dicta,  and  too  broad  a  statement.  But  in  South 
Wales  Miners'  Fed.  v.  Glamorgan  Coal  Co.11  Lord  James 
cites   this  very  passage  as  a  foundation  principle  of  law. 

Lord  Chancellor  Halsbury  sums  up  his  view  thus:  "  I  have 
never  heard  that  a  man  who  was  dismissed  from  his  service 
by  reason  of  some  slander,  could  not  maintain  an  action 
against  the  slanderer  because  the  master  had  a  legal 
right  to  discharge  him."13  Again  he  said  (p.  78) :  "I 
do  not  think  that  the  case  of  Keeble  v.  Eickeringill13 
stands  alone,  though  if  it  did,  considering  who  decided  it 
and  that  certainly  in  later  years  it  has  been  much  quoted  and 
commented  on  and  never  until  now,  so  far  as  I  am  aware, 

*  Allen  v.  Flood,  App.  Cas.  1,  102-  "  App.  Cas.  239-1905,  "  The  Stop 

3-1898.  Day  Case." 

'Allen  v.  Flood,  App.  Cas.  1,  70-  "Allen  v.   Flood,   App.   Cas.   74- 

1898.  1898. 

10  Allen  v.  Flood,  App.  Cas.  133-  u  11  East  574  note. 
1893. 


352 


LM  air  Business  Competition, 


criticised  or  questioned,  I  should  be  quite  content  to  rely  upon 
the  authority  of  so  profound  a  lawyer  as  Sir  John  Holt,  and 
such  an  expositor  as  he  was  of  the  spirit  of  freedom  which 
runs  through  the  English  law."  Lord  Halsbury  rests  his 
decision  in  part  on  Waller  v.  Cronin,u  which  decision  is  based 
on  (1)  Coniyn  Dig.,  where,  under  the  title  "Action  upon  the 
case,"  it  is  stated:  "  In  all  cases,  where  a  man  has  a  tem- 
poral loss,  or  damage  by  the  wrong  of  another,  he  may  have 
an  action  on  the  case  to  be  repaired  in  damages;"  and  on 
(2)  the  following  cases:  Keeble  v.  Hickeringill,15  Tarleton  v. 
McGawley,1Q  Green  v.  Button?"'  Gunter  v.  Astor,18  Hart  v. 
Aldridge,19  Shepherd  v.  Wakeman20  Winsmore  v.  Greenback,21 
Lumley  v.  Gye;"22  and  in  part  on  Benton  v.  Pratt,23  Rice  v. 
Manley2i  Bixby  v.  Dunlap,25  Angle  v.  Chicago,  etc.,  Railway.2* 
The*  facts  of  most  of  these  cases  will  be  found  in  this  volume. 

A  case  very  similar  to  the  Keeble  case  has  arisen  in  France. 
The  plaintiff  invited  friends  to  his  estate  to  shoot.  A  jealous 
neighbor  ordered  his  servants  to  make  a  noise  on  his  own  land 
to  frighten  away  the  game  from  the  plaintiff's  land.  He  was 
made  to  pay  damages  to  the  plaintiff.26* 

We  will  now  turn  to  the  case  of  Allen  v.  Flood2"  from  which 
the  foregoing  opinions  are  taken,  and  which  is  probably  the 
most  exhaustive  judicial  discussion  of  this  question.  Briefly 
stated,  that  case  was  an  action  by  a  discharged  workman 
against  a  delegate  of  a  union  to  which  he  did  not  belong,  on 
the  ground  that  the  delegate  caused  his  employer  to  discharge 
him.28  Twenty-one  judges  heard  the  case  in  all  its  stages. 
Thirteen,  of  whom  three  were  Law  Lords,  held  that  the  case 
presented  a  good  cause  of  action.  Eight,  six  of  whom  were  Law 


M  107  Mass.  555. 

15 11  East  574  note. 

18 1  Peake  N.  P.  C.  270. 

11  2  C.  M.  &  R.  707. 

18  4  J.  B.  Moore  12-1819. 

19 1  Cowp.  54-1774. 

21  1  Sid.  79. 

21  Willes  577-1745. 

13  2  E.  &  B.  216. 

23 2  Wend.   (N.  Y.)   385-1829. 


24  66  N.  Y.  82-1876. 

84  56  N.  H.  456 ;  22  Am.  Rep.  475. 

28 151  U.  S.  1-1893. 

***  Prince  de  Wagram  v.  Marais 
Cour  de  Paris,  Dec.  2,  1871,  Dalloz 
2,  185. 

27  App.  Cas.  1-1898. 

28  See  on  this  case  valuable  article, 
11  Har.  L.  Rev.  449. 


Interference  With  a  Competitor's  Contracts,  Etc.     353 

Lords,  denied  the  existence  of  an  actionable  wrong.  Since 
it  was  decided,  the  House  of  Lords  itself  and  other  English 
courts  have  been  astute  to  modify  and  explain  it,  so  that  its 
authority  is  now  confined  to  narrow  limits.  Lord  Halsbury, 
in  Quinn  v.  Leathern,29  says  that  ' '  the  hypothesis  of  fact  upon 
which  Allen  v.  Flood  was  decided  by  a  majority  in  this  House 
was  that  the  defendant  there  neither  uttered  nor  carried  into 
effect  any  threat  at  all.  He  simply  warned  others  against 
certain  acts."  Lord  MacNaghten  says  in  the  same  case, 
"  an  act  which  does  not  amount  to  a  legal  injury  cannot  be 
actionable  because  it  is  done  with  a  bad  intent.  That,  in 
my  opinion,  is  the  sum  and  substance  of  Allen  v.  Flood;"  zo 
and  Lord  Lindley  says  that  the  case  also  establishes  the  fact 
that  Allen  infringed  no  right  of  the  plaintiffs,  although  he 
acted  maliciously.  The  question  was  later  considered  by  the 
House  of  Lords  in  1901,  when  it  held  that  a  combination  of 
two  or  more  persons  without  excuse  and  without  justification 
to  injure  a  man  in  his  trade  by  persuading  or  inducing  his 
customers  not  to  trade  with  him,  or  his  servants  or  customers 
to  break  contracts  made  with  him,  or  not  to  deal  with  him, 
or  to  leave  his  employ,  is  actionable,  provided  he  suffers 
damages.31 

In  1905  the  House  held  that  officers  of  a  labor  union  who, 
without  malice  or  ill  will  against  the  employers,  caused  the 
members  of  the  union  to  stop  work  and  break  their  contract 
with  these  employers,  were  liable,  for  their  act  was  wrongful, 
in  the  absence  of  justification.32 

Whether  an  action  existed  at  common  law  based  solely  on 
injury  to  a  man  in  his  trade  or  business,  is  doubtful,  perhaps, 
but  some  jurisdictions,  as  will  be  seen,  have  definitely  recog- 
nized that  such  a  wrong  is  the  basis  of  an  action  now,  and 
practically  all  courts  grant  relief  against  acts  which  cause 
breach  of  contracts  made  by  others. 

The  Trade  Disputes  Act  of  1906  provides  that  an  act  done 
in  contemplation  or  furtherance  of  a  trade  dispute  shall  not 

29App.  Cas.  495-506-1901.  "South     Wales    Miners'    Fed.    v. 

80  App.  Cas.  1-1898.  Glamorgan,  App.  Cas.  239-1905. 

81  Quinn    v.    Leathern,    App.    Cas. 
495-1901. 

23 


35-4  Unfair  Business  Competition. 

be  actionable  as  an  interference  with  contract  or  with  the  trade 
or  business  of  another.  Speaking  of  this  act,  "  The  Solicitors' 
Journal  " a2a  says,  p.  156 :  "  For  general  purposes,  however,  the 
law  as  to  the  liability  of  a  third  party  for  inducing  a  breach 
of  contract  remains  untouched,  and  with  the  growth  of  modern 
restrictions  on  business,  it  is  probable  that  the  courts  will  have 
abundant  opportunity  of  applying  it."  Mr.  J.  B.  Ames  states 
his  view  of  the  rule  to  be:  "  The  wilful  causing  of  damage  to 
another  by  a  positive  act,  whether  by  one  man  alone,  or  by 
several  acting  in  concert,  whether  by  direct  action  against  him 
or  indirectly  by  inducing  a  third  person  to  exercise  a  lawful 
right,  is  a  tort,  unless  there  was  a  just  cause  for  inflicting  the 
damage,  and  the  question  whether  there  was  or  was  not  just 
cause  will  depend  in  many  cases,  but  not  in  all,  upon  the  motive 
of  the  actor."321* 

§  175.  Malice. — In  Allen  v.  Flood33  much  space  is  devoted 
to  a  consideration  of  the  meaning  of  the  term  malice,  as  defin- 
ing the  intent  to  injure,  which  the  defendant  has  when  he 
commits  acts  which  result  in  injury  to  the  plaintiff's  trade, 
profession,  or  business;  and  it  is  advisable  to  pause  here  to 
consider  this  question,  as  the  American  cases,  in  most  in- 
stances, use  the  term  in  defining  the  action  against  injury  of 
this  sort. 

Keeble  v.  HickeringillZi  is  usually  considered  as  authority 
for  two  propositions:  (a)  that  intentional  injury  to  a  man's 
business  or  trade  is  actionable;  (b)  that  malice  or  intent  to 
injure  will  under  certain  circumstances  cause  an  act,  other- 
wise legal,  to  become  illegal.  So  long  as  Hickeringill  shot 
his  gun  on  his  own  land,  in  good  faith,  no  action  arose  against 
him.  Does  the  fact  that  he  did  this  shooting  with  intent  to 
damnify  the  plaintiff  in  his  business,  create  an  action  where 
none  would  exist  had  the  intent  to  injure  not  been  shown? 

Malice  does  not  always  create  a  cause  of  action.  It  may 
cause  a  man  to  set  up  a  rival  business  next  door  to  his  enemy, 
but  so  long  as  he  pursues   that  business,  using  only  fair 

350  London,  January  4,  190S.     See  33  App.  Cas.  1-1898. 

also    Cohen's   "  Trade   Union   Law,"  31 11  East  574  note.    See  digest  of 

Lond.  1907.  case,  §  174. 

32b  IS  Harvard  Law  Rev.  p.  412. 


Interference  With  a  Competitor's  Contracts,  Etc.     355 

methods,  although  with  all  possible  malice,  no  action  arises. 
A  person  may  stop  the  percolation  of  water  from  his  land, 
when  his  evident  purpose  is  to  impair  a  city's  water  supply 
and  force  a  sale  of  land,  yet  no  action  arises.35  But  any 
invasion  of  the  civil  rights  of  another  person  is  in  itself  a 
legal  wrong.  Whether  the  motive  be  good  or  bad  does  not 
alter  this  principle.  Lord  Watson  says,  in  Allen  v.  Flood,39, 
that  "  the  existence  of  a  bad  motive  in  the  case  of  an  act 
which  is  not  in  itself  illegal,  will  not  convert  that  act  into  a 
civil  wrong  for  which  reparation  is  due.  A  wrongful  act 
done  knowingly  and  with  a  view  to  its  injurious  consequences 
may,  in  the  sense  of  law,  be  malicious,  but  such  malice  derives 
its  essential  character  from  the  circumstance  that  the  act  done 
constitutes  a  violation  of  the  law." 

In  other  words,  according  to  Lord  Watson,  no  amount  of 
malice  will  make  an  otherwise  unactionable  act,  actionable;, 
the  act  which  is  done  with  malice  mast  be  illegal  in  itself. 
Would  this  not  eliminate  the  question  of  malice  and  leave  the 
question  thus :  Is  it  actionable  to  injure  another  in  his  busi- 
ness regardless  of  malice?  which  seems  begging  the  question. 
Is  it  true  that  "  malice  derives  its  essential  character  from 
the  circumstance  that  the  act  done  constitutes  a  violation  of 
law?  "  Rather,  may  not  the  malice  often  arise  in  the  de- 
fendant's mind  because  of  something  totally  unconnected 
with  the  act  which  breaches  the  contract  and  yet  be  the  cause 
of  the  act  he  does  in  furtherance  of  his  intent  to  injure  the 
plaintiff?  In  the  Keeble  case  the  act  of  defendant  may  have 
been  prompted  by  the  fact  that  Keeble 's  children  had  an- 
noyed his  children,  or  because  he  was  jealous  of  Keeble  on 
account  of  some  political  quarrel.  If  this  be  true  then  the 
malice  or  ill  will  which  prompted  the  injurious  acts  has 
nothing  to  do  with  the  acts  complained  of.  Without  it  they 
are  legal;  the  question  is,  Does  the  presence  of  this  malice 
or  ill  will  make  them  illegal? 

Malice  may  mean  many  things ;  and  there  are  various  kinds 
of  malice  recognized  in  law.     In  defamation  cases  there  is 

"Chasemore  v.  Richards,  7  H.  L.  M  App.  Cas.  92-1898. 

C.  349-1859 ;  Mayor  of  Bradford  v. ' 
Pickles,  64  L.  J.  Ch.  101-1S95. 


356  Unfair  Business  Competition. 

implied  malice,  viz.,  absence  of  just  cause  or  excuse,  and  the 
express  or  actual  malice  which  may  be  proved  after  the  legal 
presumption  of  malice  is  rebutted.  Suffice  it  to  say  that  what 
is  meant  by  the  word,  when  used  in  describing  the  acts  of  those 
who  interfere  with  the  business  of  others,  who  get  trade 
away  from  rivals,  who  force  rivals  to  sell  out,  who  cause 
breaches  of  contracts  in  which  competitors  are  interested,  is 
not  the  usual  meaning,  which  is  "A  disposition  or  intent  to 
injure  another  or  others  for  the  gratification  of  anger,  jeal- 
ousy, hatred,  revenge."37  Rather  these  acts  are  the  result  of 
the  desire  of  business  men  to  succeed, —  to  down  rivals,  to  get 
out  of  their  way  those  who  block  their  progress.  The  acts  done 
for  this  purpose  and  those  done  in  return  by  those  injured 
result  in  "  anger,  jealousy,  hatred,  revenge,"  but  the  real 
intent  is  to  succeed  in  business,  to  make  money.  Lord 
Xindley  said 3S  that  malice  may  or  may  not  be  used  to  denote 
ill  will,  and  that  as  there  are  various  kinds  of  malice,  such 
as  presumptive  or  implied  malice  and  express  malice,  the 
term  should  be  dropped,  and  there  should  be  substituted  for 
it  the  meaning  which  is  really  intended  to  be  conveyed  by  that 
term,  as  the  word  is  not  an  apt  one  to  describe  a  mere  ' '  inten- 
tion to  commit  an  unlawful  act  without  reference  to  spite  or 
ill  feeling."  But  even  this  definition  does  not  seem  to  meet  all 
cases,  for  it  fails  to  include  the  injuries  which  are  suffered  by 
reason  of  legal  acts  done  with  the  intent  to  be  unfair  and  dis- 
iionest,  with  the  express  purpose  of  injuring  another. 

Most  of  the  acts  which  are  claimed  to  be  malicious  and  of  a 
••character  to  render  an  act  otherwise  legal  illegal,  are  un- 
scrupulous, often  dishonest  and  unfair,  but  they  are  not 
illegal.  As  an  abstract,  general  principle,  it  is  always  a  legal 
'wrong  to  injure  another  in  any  way;  but,  in  the  development 
of  business  and  civilization,  the  law  has  found  it  necessary 
to  legalize  many  injuries,  or  to  consider  certain  injuries 
of  a  character  which  prevents  any  redress  being  awarded  to 
the  person  injured.  Such  injuries  are  permitted  because  of 
some  privilege  possessed  by  him  who  inflicts  them,  which. 

37  Standard  Diet, 

38  South     Wales    Miners'    Fed.     v. 
Glamorgan,  App.  Cas.  239-1905. 


Interference  With  a  Competitor's  Contracts,  Etc.     357 

gives  liim  a  right  to  demand  of  the  law  immunity  from  the 
penalty  which  would  otherwise  be  visited  upon  him.  In  the 
adaptation  of  legal  rules  to  modern  conditions  of  business, 
the  problem  of  the  courts  will  be  to  determine  what  are  the 
privileges  of  this  sort,  which  will  justify  the  acts  which  now 
are  considered  by  many  to  be  in  violation  of  individual  rights. 
Lord  Watson  states  that  to  avail  himself  of  such  a  privilege, 
a  man  ' '  shall  act  honestly  *  *  *  and  shall  not  be  prompted 
by  a  desire  to  injure  the  person  who  is  affected  by  his  act."  39 
"  In  order  to  justify  the  intentional  doing  of  '  that  which  is 
calculated  in  the  ordinary  course  of  events  to  damage  and 
which  does  in  fact  damage  another  in  that  other  person's  prop- 
erty or  trade,'  you  must  have  some  just  cause  or  excuse.'* 
This  statement  of  Bowen,  L.  J.,  was  approved  as  "  exactly 
accurate  "  by  Lord  Chancellor  Halsbury.40 

"  I  was  on  my  own  land,"  says  Hickeringill.  "  But  while 
there,"  declared  Keeble,  "  you  planned,  intended,  and  com- 
mitted acts  expressly  to  injure  my  business,  to  destroy  my 
livelihood  because  of  malice  you  bore  me.  Your  malice  has 
rendered  your  excuse  of  no  avail.  To  hide  behind  that,  your 
act  must  have  been  done  in  good  faith."  This  motive  of  Hick- 
eringill's,  said  Lord  Holt,  created  an  actionable  wrong  out  of 
an  otherwise  legal  act.  Justice  Oliver  Wendell  Holmes  has 
said  that  "  when  a  responsible  defendant  seeks  to  escape 
liability  for  an  act  which  he  had  notice  was  likely  to  cause 
temporal  damage  to  another,  he  must  show  justification."41 
What  constitutes  such  justification  has  not  yet  been  deter- 
mined. The  most  important  justification,  he  says,  is  privi- 
lege; but  he  is  not  ready  to  admit  that  men  enjoy  such  a 
privilege  to  do  harm,  in  following  their  own  inclination,  or 
in  the  pleasure  of  doing  harm,  to  warrant  a  court  in  over- 
looking the  damage  suffered  at  their  hand  by  others.  Many 
elements,  he  thinks,  may  enter  into  a  decision  as  to  this  ques- 
tion of  privilege,  such  as  the  method  of  inducing  the  act, 
whether  by  an  act  wrongful  in  itself  or  by  advice  or  combined 

39  Allen  v.   Flood,  App.    Cas.   93-  "  8  Harv.  L.  Rev.  9. 
1898. 

40  Allen   v.   Flaod,   App.   Cas.  84- 
1S9S. 


358  Unfair  Business  Competition. 

action,  and  the  motive  underlying  the  act  may  be  most  im- 
portant. 

A  privilege  may  be  forfeited,  and  the  question  is  as  to  the 
effect  on  these  privileges  claimed  by  defendants  in  cases  in- 
volving injuries  to  business  and  trade,  of  the  fact  that  these 
injuries  were  inflicted  with  the  deliberate  intent  to  injure  the 
plaintiff  in  his  trade  or  livelihood.  Will  proof  of  such  intent 
wipe  out  the  privilege  and  compel  the  defendant  to  indemnify 
the  plaintiff  for  the  loss  he  has  inflicted? 

To  define  just  what  acts  will  constitute  privilege  —  justifica- 
tion —  would  be  a  difficult  task.  Would  it  be  desirable  ?  One 
of  the  safeguards  of  equity  jurisprudence  is  the  consistent  re- 
fusal of  equity  courts  to  define  fraud.  Lord  Halsbury  believes 
that  a  definition  of  the  acts  which  may  be  considered  as 
privilege,  is  essential  to  personal  freedom,  but  others  hold  a 
contrary  view.  Undoubtedly  every  man  has  a  right  to  pursue 
his  business  free  from  the  damage,  injury  and  loss  which  are 
the  result  of  unfairness,  dishonesty,  misrepresentation,  or  de- 
ceit on  the  part  of  others  who  shelter  themselves  behind  the 
policy  of  laws  that  freedom  of  competition  must  be  preserved 
at  all  hazards.  In  the  past  men  have  built  up  their  business 
on  the  results  of  the  labor  of  competitors  which  they  have 
seized  upon  by  use  of  methods  which  whether  legal  or  not  are 
not  equitable  or  fair  and  they  have  been  protected  by  law  to 
some  extent  in  so  doing.  Appeal  to  the  courts  for  relief 
against  such  conditions  will  be  continuous  until  some  modifica- 
tion of  the  present  rule  is  effected. 

Any  unfair  act  in  trade  has  not  for  its  end  freedom  of  compe- 
tion,  but  the  doing  away  with  competition.  But  Mr.  Bigelow 
contends,42  that  if  the  defense  of  competition  does  not  extend  to 
cases  where  the  defendant  is  trying  to  eliminate  competition, 
then  freedom  of  contract  does  not  extend  to  cases  of  the  buy- 
ing out  and  absorption  of  rivals,  and  he  believes  that  a  limita- 
tion of  the  meaning  of  both  these  terms  is  already  in  progress. 

§  176.  Interference  with  Business  Generally. —  Perhaps  the 
most  advanced  statement  of  authority  as  to  the  legal  effect 
of  inflicting  injury  in  trade  is  the  following:  "  Now,  inten- 
tionally to  do  that  which  is  calculated  in  the  ordinary  course 

42  Bigelow  Torts  (Sth  ed.)  250. 


Interference  "With  a  Competitor's  Contracts,  Etc.     359 

of  events  to  damage,  and  which  does  in  fact  damage  another 
in  that  person's  property  or  trade,  is  actionable  if  done  with- 
out just  cause  or  excuse."43  This  statement  has  been  widely- 
cited  here  and  in  England.  Lord  James  considered  it  as 
unquestioned  law  in  South  Wales  Miners'  Fed.  v.  Glamor- 
gan.44 He  also  cited  the  following:  "  Wherever  a  man  does 
an  act  which  in  law  and  in  fact  is  a  wrongful  act,  and  such  an 
act  as  may,  as  a  natural  and  probable  consequence  of  it,  pro- 
duce injury  to  another,  and  which  in  the  particular  case  does 
produce  such  injury,  an  action  on  the  case  will  lie."45 

Most  cases  of  this  character,  aside  from  those  involving  in- 
terference with  contract,  as  has  been  said,  have  arisen  over 
labor  difficulties.  They  involve  largely  the  same  fundamental 
questions  as  those  which  arise  from  other  acts  of  competitors 
in  trade,  but  these  labor  cases  are  outside  the  scope  of  this 
book.  Many  recent  cases,  although  arising  out  of  the  acts  of 
labor  unions,  have  involved  the  principle  of  liability  for  in- 
terference with  contract,  as  well  as  the  broader  question  of 
interference  with  business,  as  by  boycotting.40 


43  Mogul     Steamship     Co.    v.     Mc- 
Gregor, 23  Q.  B.  D.  598. 

"App.  Cas.  239-1905. 

isBowen  v.  Hall,  6  Q.  B.  D.  333; 
Smithies  v.  Asso.,  1  K.  B.  310-1909. 

"Alfred  W.  Booth  &  Bro.  v.  Bur- 
gess (K  J.  Eq.  1906),  65  Atl.  226 
Thacker  Coal  &  Coke  Co.  v.  Burke 
59  W.  Va.  253-1906;  53  S.  E.  161 
5  L.  R.  A.  N.  S.  1091;  Flaccus  v 
Smith,  199  Pa.  St.  128-1901 ;  48  Atl 
894;  54  L.  R.  A.  640;  Boysen  v 
Thorn,  98  Cal.  578-1893;  33  Pac 
492;  21  L.  R.  A.  233;  May  v.  Wood 
172  Mass.  11-1898;  51  N.  E.  191 
Glencoe  Land,  etc.,  Co.  V.  Hudson 
Brothers,  etc.,  Co.,  138  Mo.  439- 
1896;  40  S.  W.  93;  36  L.  R.  A.  804; 
Chambers  &  Marshall  V.  Baldwin,  91 
Ky.  121-1891;  15  S.  W.  57;  11  L.  R. 
A.  545 ;  Bourlier  Brothers  v.  Ma- 
cauley,  91  Ky.  135-1891;  15  S.  W. 
60;  11  L.  R.  A".  550;  Kline  v.  Eu- 


banks,  109  La.  241-1802;  33  So.  211; 
B.  J.  Wolf  &  Sons  v.  New  Orleans, 
etc.,  Co.,  113  La.  388-1904;  37  So. 
2;  67  L.  R.  A.  65;  McCann  v.  Wolff, 
28  Mo.  App.  447-1888.  Ashley  v. 
Dixon,  48  N.  Y.  430-1872,  is  some- 
times cited  with  the  foregoing  oases; 
but  this  was  a  ease  involving  an  ordi- 
nary real  estate  transaction,  and  it 
is  probable  that,  at  least  in  the 
normal  ease  of  inducing  a  breach  of 
contract  to  the  injury  of  a  competitor 
in  trade,  the  prevailing  rule  would 
now  be  applied  in  New  York. 
Beattie  v.  Callanan,  82  App.  Div. 
(N.  Y.)  7-1903;  81  N.  Y.  Supp. 
413 ;  also,  American  Law  Book  Co.  v. 
The  Edward  Thompson  Co.,  41  Misc. 
(N.  Y.)  396-1903;  84  N.  Y.  Supp. 
225.  Bitterman  v.  Loitisville  & 
Nashville  Railroad,  207  U.  S.  205- 
1907,  holds  that  actual  malice  is  not 
a  necessary  ingredient  of  an  action. 


360  Unfair  Business  Competition. 

§  177.  Interference  with  Contracts  by  Third  Person  En- 
joined.—  Has  a  man  an  absolute  right  to  carry  on  his  trade 
or  calling  without  being  molested,  harassed,  or  interfered 
with!  He  has  a  right  to  earn  his  living  in  his  own  way 
provided  he  does  not  violate  law  or  infringe  the  rights  of 
others.  Has  he  the  right  to  deal  with  all  other  persons  who 
may  wish  to  deal  with  him?  This  right  is  of  no  value  if  others 
may  not  deal  with  him  freely,  for  interference  with  their  liberty 
affects  him.  "  If  such  interference  is  justifiable  in  point  of  law 
he  has  no  redress.  Again,  if  such  interference  is  wrongful,  the 
only  person  who  can  sue  in  respect  of  it  is,  as  a  rule,  the  per- 
son immediately  affected  by  it.  Another  who  suffers  by  it  has 
no  redress,  the  damage  to  him  is  too  remote,  and  it  would  be 
obviously  practically  impossible  and  highly  inconvenient  to 
give  legal  redress  to  all  who  suffered  from  such  wrongs.  But 
if  the  interference  is  wrongful  and  is  intended  to  damage  a 
third  person,  and  he  is  damaged  in  fact  —  in  other  words,  if  he 
is  wrongfully  and  intentionally  struck  at  through  others,  and  is 
thereby  damnified  —  the  whole  aspect  of  the  case  is  changed; 
the  wrong  done  to  others  reaches  him,  his  rights  are  infringed, 
although  indirectly,  and  damage  to  him  is  not  too  remote  or 
unforeseen,  but  is  the  direct  consequence  of  what  has  been 
done.  Our  law,  as  I  understand  it,  is  not  so  defective  as  to 
refuse  him  a  remedy  by  an  action  under  such  circumstances."47 

To  the  defense  that  the  act  of  the  defendant  is  too  remote, 
Bigelow  says:48  "  Intention  to  have  an  act  done  and  procuring 
it  to  be  done,  though  by  persuading  another  to  do  it,  should 
bring  a  man  near  enough  to  the  act  to  make  him  accountable 
for  it;  successful  endeavor  ought  to  be  enough."  He  adds 
(p.  264) :  "Analogy  is  clearly  in  favor  of  treating  persuasion 
to  break  a  contract  as  too  dangerous  to  the  public  welfare  to 
be  permitted."     Says  Lord  Watson  of  the  House  of  Lords: 

for  interference  with  contract;  that  "Paul,  etc.,  By.  Co.,  151  U.  S.  1-1894; 

is,  malice  in  the  sense  of  personal  ill  "■   38  L.  ed.  55;  14  Sup.  Ct.  240. 

will.    However,  wanton  disregard,  on  "  Lord  Lindley  in  Quinn  v.  Leath- 

the  part   of   a  third   person,  of  the  em,    App.    Cas.    534-5-1901,    citing 

rights    of   two    or   more   contracting  v  Mogul   SS.    Co.   case,   23   Q.   B.   D. 

parties  constitutes  legal  malice  within  613;  Lumley  v.  Gye,  2  E.  &  B.  216. 

the   rule   of   Angle   v.    Chicago,   St.  "      u  Big,  Torts  (8th  ed.)  263. 


Interference  With  a  Competitor's  Contracts,  Etc.     361 

"  There  are,  in  my  opinion,  two  grounds  only  upon  which  a 
person  who  procures  the  act  of  another  can  be  made  legally  re- 
sponsible for  its  consequences.  In  the  first  place,  he  will  in- 
cur liability  if  he  knowingly,  and  for  his  own  ends,  induces  that 
other  person  to  commit  an  actionable  wrong.  In  the  second 
place,  when  the  act  induced  is  within  the  right  of  the  immediate 
actor,  and  is  therefore  not  wrongful  in  so  far  as  he  is  con- 
cerned, it  may  yet  be  to  the  detriment  of  a  third  party;  and  in 
that  case,  according  to  the  law  laid  down  by  the  majority  in 
Lumley  v.  Gye,  the  inducer  may  be  held  liable  if  he  can  be 
shown  to  have  procured  this  object  by  the  use  of  illegal  means 
directed  against  that  third  party.49  A  violation  of  legal  right 
committed  knowingly  is  a  cause  of  action;  and  it  is  a  viola- 
tion of  a  legal  right  to  interfere  with  contractual  relations  rec- 
ognized by  law  if  there  be  no  sufficient  justification  for  the  in- 
terference. "  ^  In  Beekman  v.  Marsters51  it  is  said  that  "  it 
has  been  settled  in  Massachusetts  that  there  is  no  distinction 
between  a  defendant's  enticing  away  the  plaintiff's  servant 
and  a  defendant  inducing  a  third  person  to  break  any  other 
contract  between  him  and  the  plaintiff.52  In  Nolin  v.  Pearson,53 
defendant  persuaded  and  enticed  the  plaintiff's  husband  to 
commit  adultery  and  to  refuse  to  perform  his  marital  contract. 
Held  a  wrong  for  which  the  wife  can  maintain  an  action  with- 
out joining  the  husband  as  plaintiff.54  In  Quinn  v.  Leathern,55 
the  defendants  wrongfully  and  maliciously  induced  customers 
and  servants  to  cease  to  deal  with  the  plaintiff.  This  was  held 
actionable. 

The  question  of  the  effect  of  causing  a  breach  of  contract  by 
one  not  a  party  to  it  was  first  considered  by  the  Supreme  Court 

**  Citing  National  Phonograph  Co.,  v.  Andrews,  107  Mich.  33    (contract 

Ltd,  v.  Edison  Bell,  etc.  Co.,  1  Ch.  to     construct     machine) ;     Jones     v. 

335_59_1908.  Stanley,  76  N.  C.  356  (carriers'  con- 

60  Lord  Macnaughten   in    Quinn   v.  tract)  ;   Raymond   v.   Yarrington,  96 

Leathern,  App.  Cas.  510-1901.  Tex.  400;  73  S.  W.  800;  62  L.  R.  A. 

01 195  Mass.  205,  80  N.  E.  817.  962. 

6a  See  Walker  v.  Cronin,  107  Mass.  M  191  Mass.  283-1906. 

555-57 ;  Moran  v.  Dunphy,  177  Mass.  "  See  to  same  effect  Winsmore  v. 

485 ;  Jackson  v.  Stairfield,  137  Ind.  Greenbank,  Willes  577. 

592    (contract  for"  lumber) ;  Morgan  "App.  Cas.  495-1901. 


362  Unfair  Business  Competition. 

of  the  United  States  in  Angle  v.  Chicago,  etc.,  Ry.5Q  The  court 
oited  Green  v.  Button,57  Lumley  v.  Gye,5S  Boiven  v.  Hall,5'3 
Walker  v.  Crown,00  Benton  v.  Pratt,61  Rice  v.  Manleyf2  Jones 
v.  Stanley;  **  all  of  which  cases  except  the  last  two  were  before 
the  House  of  Lords  in  Allen  v.  Flood,*4  and  cited  by  Halsbury, 
L.  C,  in  that  case. 

The  opinion  in  Angle  v.  Chicago,  etc.,  By.,  was  in  part  as 
follows :  ' '  It  has  been  repeatedly  held,  that  if  one  maliciously 
interferes  in  a  contract  between  two  parties,  and  induces  one 
of  them  to  break  that  contract  to  the  injury  of  the  other,  the 
party  injured  can  maintain  an  action  against  the  wrongdoer." 
This  case  does  not  decide  that  interference  with  a  man's  liveli- 
hood, trade,  or  business  per  se  creates  a  cause  of  action,  but 
that  it  is  actionable  to  interfere  with  a  contract  maliciously. 
The  term  "  maliciously  "  is  not  defined  in  the  case,  and  is  to 
be  presumed  to  be  here  used  in  its  ordinary  legal  meaning. 

T emperton  v.  Russell  ^  involved  acts  done  to  interfere  with 
the  contracts  with  materialmen  to  supply  builders  who  re- 
fused to  follow  union  rules.  The  plaintiff,  one  of  these  ma- 
terialmen, sued  the  unions.  These  acts  consisted  of  various 
things  done  to  bring  pressure  on  the  materialmen,  such  as 
ordering  their  members  to  refuse  to  work  on  the  plaintiff's 
goods.  It  was  held,  that  these  acts  were  not  induced  by  malice, 
but  nevertheless  were  malicious  in  the  legal  sense,  the  follow- 
ing ruling  in  Bowen  v.  Hall  being  cited:  "  IF  the  persuasion 
be  used  for  the  indirect  purpose  of  injuring  the  plaintiff,  or  of 
benefiting  the  defendant  at  the  expense  of  the  plaintiff,  it  is  a 
malicious  act,  which  is  in  law  and  in  fact  a  wrongful  act,  and 
therefore  an  actionable  act,  if  injury  ensues  from  it.  *  *  * 
that  act  is  a  persuasion  by  the  defendant  of  a  third  person  to 
break  a  contract  existing  between  such  third  person  and  the 
plaintiff."66 

56 151    U.    S.    1-1893;    affirmed   in  w  76  N.  C.  355. 

Bitterman  v.  Louisville  &  Nashville          M  App.  Cas.  1-1898. 

B.,  207  U.  S.  205.  M  1  Q.  B.  715-1893. 

67  2  C.  M.  &  R.  707.  m  Quinn    v.    Leathern,    App.    Cas. 

63  2  E.  &  B.  216.  495-509-1901,  holds  that  Temperton 

69  6  Q.  B.  D.  333-37.  v.  Bussell,  1  Q.  B.  715-1893,  was  not 

M 107  Mass.  555.  overruled   by   Allen   v.   Flood,   App. 

61  2  Wend.  (N.  Y.)  385.  Cas.  1-1898. 

63  66  N.  Y.  82. 


Interference  With  a  Competitor's  Contracts,  Etc.     363 

§  178.  Interference  with  Contracts  with  Servants. —  From 
early  times  it  has  been  considered  a  legal  wrong  to  entice  away 
a  servant,  or  to  persuade  him  to  break  the  contract  of  employ- 
ment. This  was  not  limited  to  menial  or  household  servants, 
but  was  extended  to  industrial  employees,  such  as  factory 
hands.  Under  this  rule,  acts  such  as  giving  liquor  to  em- 
ployees of  another,  entertaining  them,  and  inducing  them  by 
offer  of  higher  wages  to  leave  their  employer  or  to  sign  an 
agreement  to  that  effect,  are  actionable. 

Gunter  v.  Astor 67  was  an  action  on  the  case.  Plaintiff  was 
a  maker  of  pianos ;  his  workmen  were  under  no  contract  for  a 
definite  period,  but  worked  by  the  piece.  Defendants  were 
charged  with  conspiring  to  entice  away  plaintiff's  servants. 
They  appear  to  have  invited  the  workmen  to  a  dinner,  plied 
them  with  liquor,  and,  by  the  offer  of  higher  wages,  induced 
them  to  leave  plaintiff's  service,  and  sign  an  agreement  to  that 
effect.  Plaintiff's  business  was  practically  ruined  in  conse- 
quence. Held,  that  defendants  were  liable  in  substantial  dam- 
ages. Verdict  for  two  years'  profits  not  interfered  with  by 
the  appellate  court.68 

At  common  law  a  man  could  not  exercise  a  trade  to  which  he 
had  not  been  duly  apprenticed,  and  one  so  admitted  was 
obliged  by  statute  to  follow  and  exercise  his  trade  under  a 
penalty.69  Hence  to  prevent  a  person's  exercising  his  trade 
was  to  compel  him  to  violate  the  law. 

"  If  any  person  do  hire  or  retain  my  servant  being  in  my 
service,  for  which  the  servant  departeth  from  me  and  goeth  to 
serve  the  other,  I  may  have  an  action  for  damages  against 
both  the  new  master  and  the  servant,  or  either  of  them. ' ' 70 

This  rule  of  law  is  now  incorporated  in  the  statutes  of  some 
states.    For  instance  the  laws  of  Georgia,71  provide  that  when 

67  Gunter  v.  Astor,  4  J.  B.  Moore  carefully  considered  case ;  Haskins 
12-1819,  an  action  on  the  case.  See  v.  Royster,  70  N.  C.  601-1874;  Jones 
also  Hart  v.  Aldridge,  Cowp.  54-  &  Jester  v.  Blocker,  43  Ga.  331— 
1774 ;  Scidmore  v.  Smith,  13  Johns.  1871 ;  Bixby  v.  Dunlap,  56  N.  H. 
(N.  Y.)    322-1816;  Stuart  v.  Simp-  456-1876. 

son,  1  Wend.  (N.  Y.)   376-1828.  m  Pollock  Contracts  313. 

68  See  also  Walker  v.  Cronin,  107  70  Blackstone,  Book  1,  §  429. 
Mass.   555-1871 ;    Chipley  v.  Atkin-  n  Acts  of  1903,  p.  91. 

son,  23  Fla.  206-1887;  1  So.  934,  a 


36-i  Unfair  Business  Competition. 

the  relation  of  landlord  and  tenant,  or  employer  and  employee, 
as  regards  agricultural  lands,  has  been  established  by  written 
contract,  or  parol  contract  partly  performed,  it  is  unlawful  for 
a  third  person  "  to  employ  or  to  rent  lands  to  *  *  *  or 
disturb  in  any  way  said  relation  without  first  obtaining  the 
written  consent  of  said  employer,"  etc.72 

In  J.  S.  Brown  Hardware  Co.  v.  hid.  Stove  Works,73  there 
seems  to  be  the  element  of  fraud  as  well  as  of  inducing  breach 
of  contract,  as  there  defendant  induced  plaintiff's  traveling 
salesman  while  in  plaintiff's  employ  under  a  contract  of  ex- 
clusive service,  to  act  at  the  same  time  in  the  service  of  de- 
fendant. In  these  cases  it  seems  settled  that  it  is  not  necessary 
that  there  should  be  any  contract  for  a  definite  period.74 

The  Harvard  Law  Review14*  considers  that  where,  in  these 
cases,  the  breach  is  of  a  contract  involving  no  personal  service 
the  weight  of  authority  is  against  recovery  unless  illegal  means 
are  used,74b  and  contends  there  is  no  valid  reason  for  the 
distinction,  saying:  "  The  principle  covering  all  these  cases 
would  seem  to  be  that  anyone  intentionally  causing  pecuniary- 
loss  to  another  is  prima  facie  liable." 

On  the  authority  of  the  cases  mentioned  in  the  note  below 
the  Massachusetts  court  has  held  in  Moran  v.  Dunphy,74*  that 
maliciously  and  without  justifiable  cause  to  induce  a  third  per- 
son to  end  his  employment  by  either  false  slanders  or  success- 
ful persuasion  is  an  actionable  tort.74d 

§  179.  Lumley  v.  Gye,  and  Later  Cases.—  Lumley  v.  Gye,™ 
marked  a  step  in  the  development  of  the  rule.  It  was  there 
held,  that  defendant  was  guilty  of  a  tort,  in  inducing  an  opera 
singer  to  refuse  to  perform  her  contract  to  sing  at  the  plain- 
tiff's theatre,  and  the  plaintiff's  contract  rights  were  protected 

72  MeBride  v.  O'Neal,  128  Ga.  473-  7M  Walker   v.    Cronin,    107    Mass. 

1907;  57  S.  E.  789;  Miss.  Code  1892,  555;  Morasse  v.  Brocher,  151  Mass. 

§  1068,  to  the  same  effect.  567;    Tasker  v.    Stanley,  153    Mass. 

"96  Tex.  453-1903;  73  S.  W.  800.  148;   Vegelahn  v.  Gunter,  167  Mass. 

uChipley    v.    Atkinson,    23     Fia.  92;   Hartnett  v.  Plumbers,  etc.,  169 

206-1887 ;  1  So.  934.  Mass.  229 ;  Weston  v.  Barnieoat,  175 

M,Vol.  16,  p.  228.  Mass.    454;    Plant    v.    Woods,    176 

746  See   Boipsen   v.    Thorn,    98    Cal.  Mass.  492. 

578;  Jones  v.  Stanley,  76  N.  C.  355.  7B  2  E.  &  B.  216-1853. 

7ic  111  Mass.  487. 


Interference  With  a  Competitor's  Contracts,  Etc.     36 j 

by  injunction.  The  contract  was  wholly  executory,  and  the 
wrong  could  hardly  be  placed  under  the  familiar  category  of 
enticing  away  servants,  but  the  case  may  be  regarded  as  the 
starting  point  of  the  development  of  the  law  which  has  now 
resulted  in  the  establishment  of  the  broad  rule. 

This  was  followed  in  Bowen  v.  Hall.™  The  plaintiff,  a 
brick  manufacturer,  entered  into  a  contract  with  one  Pearson, 
in  view  of  his  special  skill  and  knowledge  of  certain  secret 
processes,  under  which,  for  a  period  of  years,  Pearson  was  to 
supervise  the  manufacture  of  certain  kinds  of  brick,  finding  all 
labor  and  a  part  of  the  materials.  Defendants,  rivals  in  trade, 
persuaded  him  to  break  his  contract  and  enter  their  employ. 
This  was  held  to  be  actionable.  Similarly  a  president  of  a 
corporation  who  caused  the  corporation  to  refuse  to  complete 
a  contract,  with  the  purpose  of  injuring  the  plaintiff,  was  suc- 
cessfully proceeded  against  personally.77 

In  Taylor  Iron  &  Steel  Co.  v.  Nichols,18  defendant  Nichols 
was  employed  by  complainant  and  taught  its  secret  processes 
in  the  manufacture  of  steel,  under  an  agreement  not  to  divulge 
the  same.  His  co-defendant  was  a  competing  company,  which 
induced  Nichols  to  violate  his  contract  and  enter  its  employ, 
disclosing  to  it  these  trade  secrets.  Complainant  was  held  en- 
titled to  a  preliminary  injunction  restraining  defendants  from 
disclosing  trade  secrets,  and  restraining  defendant  company 
from  employing  Nichols  during  the  term  of  his  contract  with 
complainant,  although  not  to  an  injunction  restraining  Nichols 
from  entering  the  employ  of  another  during  that  period. 

In  California,  "  maliciously  inducing  another  to  break  his 
contract  with  a  third  person  will  not  create  a  liability  to  the 
latter,  when  it  is  done  without  threats,  violence,  falsehood,  de- 
ception, or  benefit  to  the  person  inducing  the  breach. ' ' 79    The 

76  L.  R.  6  Q.  B.  Div.  333-1881.  plete  the  contract.    Plaintiff  sued  the 

"  Jones  v.   Stanly,  76  N.   C.  355-  president  personally  for  causing  this 

1877.     Plaintiff  had  contracted  with  breach  of  his  contract  with  the  rail- 

a   railroad   company   to    carry   cross  road  company  and  was  held  entitled 

ties  for  him.     Defendant,  the  presi-  to  recover. 

dent  and  superintendent  of  the  rail-  T8  70  N.  J.  Eq.  541-1905 ;  s.  c.  65 

road  company,  for  the  purpose  of  in-  Am.  Rep.  695-1907. 

juring  the  plaintiff,  refused  to  com-  "  Boy sen  v.  Thorn >  98  Cal.  578. 


366  Unfair  Business  Competition. 

same  is  held  in  Kentucky,  Chambers  v.  Baldwin,80  Boulier  v. 
Macauley;  81  in  Missouri,  Glencoe  Land  Co.  v.  Hudson  Bros8'- 
In  Boulier  v.  Macauley,8*  Boulier  contracted  with  an  actress 
to  play  at  his  theatre.  Later  defendant  caused  her  to  break 
the  contract.  Held  there  was  no  cause  of  action.  The  facts 
of  the  case  are  very  similar  to  Lumley  v.  Gye,  supra84 

In  New  Hampshire  a  binding  contract  of  service  is  held 
necessary.85 

§  180.  Causing  Breach  of  Contracts  for  Furnishing  In- 
formation.—  The  doctrine  in  question  has  been  applied  also 
to  contracts  for  the  furnishing  of  market  quotations  under 
certain  restrictions  as  to  their  use  by  the  one  buying  them, 
such  as  that  they  should  not  be  divulged.  One  who  acquires 
information,  either  by  discovery  or  by  labor,  is  entitled  to 
the  aid  of  law  to  protect  the  information  as  a  secret.  The 
fact  that  others  might  do  similar  work  is  no  reason  why  they 
may  steal  plaintiff's  information.  This  information  may 
be  communicated  to  others  who  are  in  confidential  relations 
with  the  owner;  and  if  a  contract  exists  between  owner  and 
customer  that  the  customer  will  not  make  the  information 
public,  it  will  be  enforced  by  equity,  and  third  persons  will  be 
restrained  from  using  this  knowledge  if  they  obtain  it  from 
any  customer  in  violation  of  his  contract.86  "  The  plaintiff 
does  not  lose  its  rights  by  communicating  the  result  to  per- 
sons, even  if  many,  in  confidential  relations  to  itself,  under  a 
contract  not  to  make  it  public,  and  strangers  to  the  trust  will 
be  restrained  from  getting  at  the  knowledge  by  inducing  a 

"  91  Ky.  121.  Dodge  Co.  v.  Construction  Informa- 

11  91  Ky.  135.  •  tion  Co.,  1S3  Mass.  62-1903;  66  N. 

"138  Mo.  439.  E.  204;  60  L.  R.  A.  810;  Board  of 

83  91  Ivy.  135.  Trade  v.  C.  B.  Thomson  Commission 

M  2  E.  &  B.  216-1853.  Co.,  103  Fed.  902-1900  (C.  C.  Wis.) ; 

86  Campbell  v.  Cooper,  34  N.  H.  49.  Board    of    Trade    v.    Hadden-Krull 

But  see  also  Noice  v.  Brown,  39  N.  Co.,  109  Fed.  705-1901  (C.  C.  Wis.) ; 

J.   L.   569;   Haskins   v.   Royster,   70  National     Telegraph     News     Co.     v. 

N.  C.  601.  Western    Union    Telegraph   Co.,   119 

"Exchange  Telegraph  Co.  v.  Greg-  Fed.  294-1902  (C.  C.  A.  7th  Cir.) ; 

ory  &  Co.,  1  Q.  B.  D.  147-1896 ;  F.W.  60  L.  R.  A.  805. 


Interference  With  a  Competitor's  Contracts,  Etc.     367 

breach  of  trust  and  using  knowledge  obtained  by  such  a 
breach. ' ' 87 

The  same  has  been  held  in  England.  In  the  case  of 
Exchange  Telegraph  Co.  v.  Gregory  &  Co.,88  it  was  held,  that 
the  plaintiff  which  published  the  stock  exchange  news  to  sub- 
scribers, in  confidence,  under  contract,  was  entitled,  not  only 
to  an  injunction  against  a  subscriber  divulging  the  news  in 
violation  of  his  contract,  but  also  to  restrain  an  outsider  from 
inducing  subscribers  to  communicate  the  news  to  him  con- 
trary to  the  terms  of  such  contract,  these  terms  being  known 
to  the  outsider ;  and  that  no  proof  of  special  damage  was  neces- 
sary. Said  the  court:  "  Merely  to  persuade  a  person  to 
break  his  contract  may  not  be  wrongful  in  law  or  fact 
*  *  * ;  but  if  the  persuasion  be  used  for  the  indirect  pur- 
pose of  injuring  the  plaintiff  or  of  benefiting  the  defendant 
at  the  expense  of  the  plaintiff,  it  is  a  malicious  act  which  is 
in  law  and  in  fact  a  wrong  act,  and  therefore  a  wrongful 
act,  and  therefore  an  actionable  act  if  injury  ensues  from  it." 
The  case  of  Exchange  Telegraph  Co.,  Ltd.  v.  Central  News" 
is  to  the  same  effect.  In  all  of  these  cases  will  be  found  a 
breach  of  contract  induced  by  some  third  person  for  his  own 
profit. 

§  181.  Causing  Breach  of  Passengers'  Contracts  with 
Transportation  Companies. —  The  rule  has  been  repeatedly 
applied  to  dealings  by  ticket  brokers  in  nontransferable 
tickets,  such  as  return  coupons ;  and  they  have  been  en- 
joined from  buying  and  selling  such  tickets  on  the  ground 
that  they  could  only  do  so  by  inducing  those  from  whom 
they  bought  them  to  violate  their  contract  with  the  trans- 
portation company  not  to  transfer  such  coupons.  While 
somewhat  different  grounds  for  these  decisions  have  been 
suggested,  they  are  distinctly  placed  upon  the  ground  of 
interference  with  contract.  The  United  States  Supreme 
Court  in  Bitterman  v.  Louisville  &  Nashville  R.  R.,90  has  so 
held.     The  court  there  cites  and  applies  the  rule  laid  down 

87  Board  of  Trade  v.  Christie  Grain       M  73  L.  T.  120-24-1895. 
&  Stock  Co.,  198  TJ.  S.  236-50-1904;       "  2  Ch.  48-1897. 
49  L.  ed.  1031 ;  25  Sup.  Ct.  637.  "  207  U.  S.  205-23-1907. 


S6S  Unfair  Business  Competition. 

in  Angle  v.  Chicago,  St.  Paul,  etc.,  Ry.  Co.,01  "  that  an  action- 
able wrong  is  committed  by  one  who  '  maliciously  interferes 
in  a  contract  between  two  parties,  and  induces  one  of  them 
to  break  that  contract  to  the  injury  of  the  other,'  "  deeming 
it  clear  that  this  principle  "  embraces  a  case  like  the 
present,  that  is,  the  carrying  on  of  the  business  of  purchasing 
and  selling  nontransferable  railroad  tickets  for  profit,  to  the 
injury  of  the  railroad  company  issuing  such  tickets  "  and 
remarking  that  "it  is  not  necessary  that  the  ingredient  of 
actual  malice  in  the  sense  of  personal  ill-will  should  exist;" 
and  that  in  such  a  case,  the  "  wanton  disregard  of  the  rights  " 
of  the  complaining  party  constituted  legal  malice  within  the 
meaning  of  the  foregoing  statement  of  the  rule. 

There  are  several  decisions  of  the  lower  federal  courts  to 
the  same  effect  as  the  Bitterman  case.  A  New  York  (Special 
Term)  opinion,  which  is  of  doubtful  authority,  is  opposed  to 
these  cases.02 

§  182.  Summary. —  From  the  foregoing  pages,  it  will  be 
seen  that  one  who  interferes  in  a  transaction  between  other 
persons  who  are  about  to  enter  into,  or  are  already  under  con- 
tract obligation  to  each  other,  may  often,  not  always,  be  held 
for  damages  or  enjoined.  The  cases  mentioned  above  do  not 
include  the  class  of  cases  most  closely  related  to  unfair  com- 
petition as  the  term  is  usually  understood.  They  have  been 
discussed  because  they  serve  to  illustrate  various  applications 
of  this  principle  which  is  now  under  such  frequent  discussion. 

We  will  now  take  up  various  cases  which  seem  to  show  the 
present  understanding  as  to  what  is  such  interference  with  a 

"151  U.  S.  1-1894;  38  L.  ed.  55;  R.  R.  Co.  v.  Reeves,  85  N.  Y.  Supp. 

14  Sup.  Ct.  240.  28-1903;    disapproved   in    Bitterman 

n  Illinois  Cent.  R.  Co.  v.  Caffrey,  v.  Louisville  &  Nashville  R.,  supra. 

128  Fed.  770-1904  (C.  C.  Mo.);  D.,  The     question     under     consideration 

L.  &  W.  R.  Co.  v.  Frank,  110  Fed.  was  hardly  discussed  in  the  opinion 

689-1901     (C.    C.    W.    D.    N.    Y.) ;  by    Lambert,    J.,    though    really    in- 

Nashville,  C.  &  St.  L.  Ry.  Co.  v.  Mc-  volved;  the  whole  question  before  the 

Connell,    82    Fed.    65-1897     (C.    C.  court,    as   remarked   by   the    Justice, 

Tenn.) ;  Penn.  R.  Co.  v.  Beehman,  30  having      become      purely      academic 

Wash.   (D.  C.)  Law  Rep.  715-1902.  through  lapse  of  time. 
Contra,  the  case  of  N.  Y.  C.  &  H, 


Interference  With  a  Competitor's  Contracts,  Etc.     369 

contract  as  will  afford  ground  for  an  action  at  law  for  dam- 
ages or  for  a  preventive  remedy  in  equity. 

§  183.  What  Constitutes  Interference  with  Contract. — 
Persons  who  are  not  lawyers  are  inclined  to  believe  that 
everything  is  lawful  which  is  not  criminally  punishable.  This 
is  a  serious  misconception.  To  break  a  contract  is  to  commit 
a  wrong.  Paying  damages  does  not  make  a  wrong  action  a 
right  one.  A  breach  of  contract  would  not  be  actionable  if  it 
was  a  right  thing  to  do. 

If  a  co-contractor  refuses  to  concur  in  a  breaching  of  a 
contract  it  is  no  justification  of  the  other  contracting  party, 
or  of  a  third  person  who  causes  a  breach,  that  they  believed 
a  breach  would  benefit  the  co-contractor.  Nor  is  the  fact  that 
they  believed  that  their  breach  would  do  the  other  party  no 
harm;  or  the  fact  that,  on  normal  or  religious  grounds,  they 
feel  they  should  not  perform  the  contract,  any  excuse  for  not 
doing  what  they  agree  to  do.  Lord  Halsbury  thinks  that  if 
there  are  sometimes  cases  where  a  person  is  justified  on  moral 
or  religious  grounds  in  breaking,  a  contract,  there  is  in  such 
cases  the  question  whether  or  not  there  is  not  an  equally  strong 
reason  why  he  who  breaks  the  contract  should  not  indemnify 
the  person  whom  the  breach  injures.93 

There  are  at  least  two  ways  of  interfering  with  contracts 
made  by  other  persons:  (a)  by  preventing  a  contract  being 
made,  (b)  by  causing  the  parties  to  it  to  break  it  after  it  is 
made.  Mr.  Bigelow  claims  that  to  make  a  prima  facie  cause  of 
action  for  procuring  one  person  not  to  contract  with  another, 
three  things  must  be  shown:  (1)  Notice  to  the  defendant  of 
the  plaintiff's  relation  to  the  third  person;  (2)  interference 
with  that  relation;  (3)  damage.94  In  Temperton  v.  Russell,95 
it  was  set  up  that  a  distinction  exists  between  inducing  the 
breach  of  a  contract  already  entered  into  and  inducing  per- 
sons not  to  enter  into  contracts,  but  the  court  refused  to 
sustain  it,  saying  that  the  same  wrongful  intent  existed  in 
both  cases   and   the   same   sort  of  injury  to   the  plaintiff. 

88  South  Wales  Miners'  Federation  "Bigelow    Torts     (8th    Am.    ed.) 

v.   Glamorgan   Coal   Co.,   App.    Cas.  141. 

245-1905.                 .  "1Q.  B.  715-28-1893. 
24 


370  Unfair  Business  Competition. 

Gregory  v.  Duke  of  Brunswick9*  was  cited  as  sustaining  the 
rule  that  acts  which  prevent  contracts  being  made  are  action- 
able. In  this  case  judgment  was  given  for  defendant  on  alle- 
gations showing  that  he  with  others  had  conspired  to  cause 
disturbance  at  a  theatre  which  prevented  persons  coming  to 
see  and  hear  plaintiff,  an  actor,  perform. 

There  are  a  -number  of  cases  to  be  found  in  which  there  was 
interference  with  a  contract,  but  there  is  no  definite  state- 
ment of  a  rule  of  law  in  them.  For  instance  in  Benton  v. 
Pratt,97  third  parties  agreed  to  purchase  of  plaintiff  200  hogs 
to  be  delivered  three  or  four  weeks  later,  provided  the  pur- 
chasers had  not  been  previously  supplied.  Later  plaintiff* 
started  with  his  drove  of  hogs  for  the  town  where  they  were 
to  be  delivered,  and  on  the  way  overtook  the  defendant  with 
another  drove.  Defendant  told  plaintiff  he  was  going  to 
another  town,  and  plaintiff  disclosed  the  particulars  of  his 
own  sale.  Defendant  then  arranged  to  get  away  with  his 
drove  first,  took  them  to  plaintiff's  buyer  and  represented 
that  plaintiff  was  going  to  another  town  and  did  not 
intend  to  perform  his  contract.  Thereupon  plaintiff's  ven- 
dees purchased  defendant's  hogs  and  refused  to  purchase 
plaintiff's,  when  he  arrived  later.  Held,  that  plaintiff  was 
entitled  to  recover  damages.  In  Bice  v.  Manley,98  the  plain- 
tiffs agreed  with  Stebbins  to  buy  cheese  for  future  delivery 
at  Cattaraugus.  Defendant  knew  of  this  agreement,  and  to 
deprive  the  plaintiffs  of  the  benefit  of  it  caused  a  telegram 
to  be  sent  to  Stebbins  signed  "  E.  Rice,"  which  he  intended 
Stebbins  should  understand  to  be  one  of  the  plaintiffs,  to 
the  effect  that  he  could  sell  the  cheese  and  that  the  plaintiff 
did  not  want  it.  He  took  the  dispatch  to  the  telegraph  office 
and  then  carried  it  to  Stebbins,  and  by  this  fraud  induced 
Stebbins  to  sell  and  deliver  the  cheese  to  him  before  the  date  of 
delivery  to  the  plaintiffs  arrived.  Earl,  J.,  held,  citing  Coke, 
J.,  in  3  Bulstr.  95,  that  "  fraud  without  damage,  or  damage 
without  fraud,  gives  no  cause  of  action;  but  where  these  two 
concur  an  action  lies,"  and  that  the  plaintiffs  would  have  been 
damaged  by  reason  of  the  defendant's  fraud.    "  Schemes  of 

66  6  M.  &  G.  953-1844.  "  66  N.  Y.  S2-1S76. 

97  2  Wend.  (N.  Y.)  385-1829. 


Interference  With  a  Competitor's  Contracts,  Etc.     371 

fraud  may  be  so  cunningly  devised  as  to  elude  the  eye  of  jus- 
tice, but  tbey  must  not  escape  condemnation  and  reparation 
when  discovered  "  (id.  p.  87).  Judgment  for  the  plaintiff."  In 
1895  it  was  held  in  Rice  v.  Albee,1  that  a  third  person  who  per- 
suaded A.  not  to  enter  into  a  partnership  with  B.  did  not  com- 
mit a  wrongful  act.  Later,  in  1900,  speaking  of  a  case  where  a 
trade  union  interfered  with  employees  of  a  third  person,  the 
court  said,  in  Plant  v.  Woods:2  "  It  is  not  necessary  that 
the  liberty  of  the  body  should  be  restrained.  Restraint  of  the 
mind,  provided  it  would  be  such  as  would  be  likely  to  force 
a  man  against  his  will  to  grant  the  thing  demanded,  and 
actually  has  that  effect,  is  sufficient  in  cases  like  this  "  (id. 
p.  502) ;  and  following  this  case,  in  Berry  v.  Donovan?  the 
plaintiff  worked  for  one  who  had  agreed  not  to  employ  any 
but  union  men.  The  plaintiff  was  a  non-union  man.  The. 
union,  without  any  threats,  asked  the  employer  to  discharge 
the  plaintiff,  and  he  did  so.  Knowlton,  C.  J.,  held  this  act 
unlawful.  The  decision  of  the  case  turned  largely  on  what 
was  fair  and  unfair  competition.  The  union  contended  that 
this  interference  was  "  a  kind  of  competition  "  (p.  357). 
Held,  that  "  an  interference  by  a  combination  of  persons,  to 
obtain  the  discharge  of  a  workman  because  he  refuses  to 
comply  with  their  wishes,  for  their  advantage,  in  some  matter 
in  which  he  has  a  right  to  act  independently,  is  not  competi- 
tion "  (p.  357). 

A  tourist  agent  who  obtained  an  exclusive  contract  within 
specified  territory  to  represent  a  certain  hotel,  has  enjoined 
a  competitor  who  attempted  to  induce  the  hotel  company  to 
break  the  contract.  The  opinion  of  Loring,  J.,  carefully  dis- 
cusses the  whole  subject,  including  the  distinction  between 
cases  involving  an  interference  with  rights  under  a  contract 
actually    existing,    and    those    involving    interference    with. 

"  Citing  Benton  v.  Pratt,  2  Wend.  a  164  Mass.  88 ;  41  N.  E.  122. 

(N.  Y.)  385-1829;  Snow  v.  Judson,  '176   Mass.    492-1900;    57   N.   E. 

38  Barb.  (N.  Y.)   210-1862;  Pasley  1011;  51  L.  R.  A.  339. 

v.  Freeman,  3  Term  Rep.  51-1789;  '188   Mass.    353-1905;    74  N.    E. 

White  v.  Merritt,  7  N.  Y.  352-1852;  603;  5  L.  R.  A.  N.  S.  899. 
Bung  v.  Parker,  52  N.  Y.  494-1873, 
distinguished. 


372  Unfair  Business  Competition. 

^another's  general  right  to  make  contracts  and  do  business. 
The  tourist  agent,  at  Boston,  contracted  with  a  company 
having  the  only  hotel  in  the  Jamestown  Exposition  Grounds, 
to  act  as  its  exclusive  agent  in  New  England.  Defendant, 
a  rival  agent,  then  represented  to  the  hotel  company  that  it 
was  a  mistake  to  make  any  one  man  the  exclusive  New  Eng- 
land agent,  that  plaintiff's  business  was  insignificant,  and 
that  he  had  made  false  statements  as  to  his  subagencies.  He 
thus  influenced  the  company  to  grant  him  similar  rights  of 
representation,  without  regard  to  its  exclusive  contract  with 
plaintiff.  The  defendant  was  enjoined  from  acting  as  the 
company's  agent  in  New  England,  and  from  interfering  with 
plaintiff's  exclusive  rights.4 

The  acts  of  a  corporation,  by  which  a  rival  corporation  is 
prevented  from  completing  a  railroad,  and  is  thereby  caused  to 
forfeit  land  granted  to  it  conditionally  on  its  completing  the 
road  in  a  given  time,  are  actionable  and  an  action  on  the  case 
will  lie  in  such  a  case.  Equity  will  impress  on  the  lands  which 
the  offending  corporation  fraudulently  prevented  the  other 
from  securing,  and  obtained  for  themselves,  a  trust  ex  maleficio 
or  ex  delicto.5  This  case  involved  distinctly  fraudulent  deal- 
ing, but  the  decision  is  based  upon  the  broader  ground;  and  the 
case  seems  to  be  authority  for  the  proposition  that  it  is  action- 
able not  only  to  induce  breach  of  contract  by  direct  means, 
such  as  persuasion  and  inducement,  but  also  to  bring  it  about 
by  indirect  means,  if  employed  deliberately  and  without  justifi- 
cation for  the  same  end,  as  by  disabling  a  party  from  perform- 
ing the  contract.  The  facts  were  these:  a  railway  company 
(briefly  described  as  the  Portage  Company)  holding  a  land 
grant  from  the  state  on  condition  of  completing  a  railroad  by  a 
certain  time,  made  a  contract  with  one  Angle  to  construct  a 
portion  of  the  line.  Defendant,  a  competing  railway  company, 
by  bribing  officers  of  the  Portage  Company,  wrongfully  ob- 
tained an  injunction,  and  otherwise  secured  control  of  the  Por- 
tage Company,  preventing  Angle  from  completing  his  work, 
and  rendered  the  Portage  Company  insolvent,  so  that  Angle 

*  Beekman  v.  Marsters,  195  Mass.  B  Angle  v.   Chicago,  St.  Paul,  etc., 

205-1907;  80  N.  E.  817;  11  L.  R.  A.      Ry.  Co.,  151  U.  S.  1-1894;  38  L.  ed. 
N.  S.  201.  55;  14  Sup.  Ct.  240. 


Interference  With  a  Competitor's  Contracts,  Etc.     373 

was  unable  to  collect  from  it  a  judgment  obtained  against  it 
for  damages  for  breach  of  contract.  '  The  defendant  was  held 
liable  to  Angle  for  his  damages  on  the  ground  that  it  had  mali- 
ciously interfered  in  the  contract  and  brought  about  its 
violation. 

Persons  inducing  the  breach  of  the  provisions  of  a  lease,  re- 
sulting in  preventing  the  lessee  from  carrying  on  a  profitable 
business,  were  held  liable  in  Martens  v.  Reilly.9 

Unless  the  contract  with  which  the  defendant  attempts  to 
interfere  is  a  valid  one,  no  liability  will  arise.  Thus  in 
Bobbs-Merrill  Co.  v.  Straus,7  a  book  was .  published  by  com- 
plainants with  a  notice  that  no  dealer  was  licensed  to  sell 
it  at  less  than  one  dollar,  the  retail  price  of  the  book,  and 
that  a  sale  at  a  lower  price  would  be  treated  as  an  infringe- 
ment of  the  copyright.  Defendants  purchased  copies  from 
wholesalers,  who  had  entered  into  no  contract  with  com- 
plainants, and  proceeded  to  sell  them  at  eighty-nine  cents. 
Defendants  held  not  liable;  injunction  denied. 

Causing  one  under  a  contract  to  supply  work,  labor,  or 
services,  or  goods  to  a  competitor,  to  cease  to  carry  out  his 
contract  is  actionable.  Damages  were  allowed  in  a  case  where 
the  plaintiff  was  conducting  a  laundry  business,  but  had  no 
plant  of  her  own,  and  had  entered  into  contracts  with  various 
laundries  to  do  her  work,  and  the  defendants,  apparently  com- 
peting laundrymen,  by  inducements  and  threats,  persuaded 
several  of  these  laundries  to  break  their  contracts  with  the 
plaintiff  and  refuse  to  do  her  work.8 

In  Heath  v.  American  Book  Co.,9  plaintiffs  had  entered  into 
a  contract  with  the  state,  pursuant  to  a  statute,  to  supply  for 
five  years  all  of  a  certain  class  of  text  books  required  for  use 
in  public  schools  of  the  state.  Defendant  knowing  that  this 
contract  was  in  force,  induced  the  school  boards  of  certain 
counties  to  substitute  certain  of  its  books  for  those  furnished 
by  plaintiff,  and  was  adjudged  liable  in  damages. 

"109   Wis.   464-1901;    84   N.   W.  608-1898;  52  N.  E.  924;  43  L.  R. 

840.  A.  797. 

7 147  Fed.  15-1906    (C.   C.  A.  2d  997    Fed.    533-1899    (C.    C.    W, 

Cir.),  affirmed,  210  U.  S.  339-1907.  Va.). 

8  Dor emus    v.    Hennessy,    176    111. 


374  Unfair  Business  Competition. 

§  184.  Ignorance  of  the  Existence  of  the  Contract  is  no 
Defense  Against  an  Injunction. —  Ignorance  of  the  contract 
relation  may  be  a  defense  to  an  action  at  law  for  damages  in 
such  cases  as  these,  but  would  not  necessarily  be  a  sufficient 
reason  for  denying  an  injunction  against  the  new  employer,  or 
against  the  employee  who  had  broken  his  contract. 

§  185.  Procuring  Breach  of  Contract  Not  to  Re-enter  Busi- 
ness.— The  rule  under  consideration  has  been  applied  by  hold- 
ing liable  third  jDersons,  who  induced  the  breach  of  an  agree- 
ment not  to  engage  in  business  again,  which  contracts  had  been 
made  by  one  selling  his  business,  or  by  a  former  partner. 

"Where  a  person  has  bound  himself  by  contract  not  to  en- 
gage in  business  on  his  own  account  or  for  another  in  compe- 
tition with  complainant,  he  will  be  enjoined  from  violating  the 
contract.  And  a  person  who  had  employed  him  will  be  enjoined 
also  from  continuing  to  employ  him  in  a  competing  business, 
and  the  fact  that  such  employer  acted  in  ignorance  of  the  con- 
tract was  held  to  be  no  defense  in  the  injunction  proceedings.10 

Two  partners  on  selling  their  business  to  plaintiff,  stipu- 
lated not  to  engage  in  a  similar  business  in  a  certain  territory. 
One  of  the  partners  violated  this  contract,  and  not  only  the 
partners,  but  also  other  persons  who  had  knowingly  induced 
the  violation  of  the  contract,  were  held  liable  in  damages.11 

A  dealer  sold  his  bologna  sausage  business  and  cove- 
nanted not  to  engage  either  for  himself  or  as  agent  or  servant 
in  that  business  thereafter.  His  wife  and  brother-in-law  later 
established  a  similar  business  of  which  he  acted  as  manager. 
Not  only  was  he  enjoined  from  further  violation  of  his  cove- 
nant, but,  what  is  of  most  interest  in  this  discussion,  his  wife 
and  brother-in-law,  though  not  bound  by  the  covenant,  were 
at  the  same  time  enjoined  by  the  equity  court  in  New  Jersey 
from  causing  him  to  violate  his  obligation  by  employing  him, 
and  holding  him  out  as  their  agent.12 

10  A.  Booth  <£•  Co.  v.  Davis,  127  '  12  Fleckenstein  Bros.  Co.  v.  Fleck- 
Ted.  875-1904  (C.  C.  Mich.).  enetein,  66  N.  J.  Eq.  252-1904;  57 

11  Raymond   v.    Yarrington,    73    S.       Atl.  1025. 
W.  800;  62  L.  R.  A.  962;  96  Tex. 
443-1903. 


Interference  With  a  Competitor's  Contracts,  Etc.     375 

§  186.  Position  of  New  York  Courts  on  this  Rule. — There 
is  some  doubt  as  to  the  extent  to  which  this  doctrine  is  applied 
in  New  York,13  but  there  is  a  recent  case  in  that  state,14  decided 
in  a  lower  court,  in  which  a  publisher  was,  by  preliminary  in- 
junction, restrained  from  inducing  subscribers  to  break  their 
contracts  with  a  rival  publisher;  and,  although  in  this  case 
there  was  an  element  of  false  representation,  the  decision  was 
placed  upon  the  broader  ground  that  it  was  a  wrong  to  induce 
the  violation  of  a  contract.  The  inadequacy  of  the  relief  which 
could  be  given  by  action  at  law,  it  being  held  impossible  to 
estimate  the  damage  which  might  be  caused  by  future  litiga- 
tion, or  loss  of  business  suffered  by  the  plaintiff,  was  con- 
sidered by  the  court  ground  for  equitable  interference.  The 
facts  were  these:  plaintiff  and  defendant  published  rival  en- 
cyclopedias. Defendant  was  making  agreements  with  sub- 
scribers to  the  plaintiff's  book  whereby  it  undertook  to  in- 
demnify these  subscribers  against  claims  for  damages  for 
breach  of  contract  in  declining  to  receive  and  pay  for 
plaintiff's  books.  The  allegations  further  disclosed  inten- 
tional misrepresentation  by  the  defendant  to  these  sub- 
scribers, as  to  the  merit  of  the  books,  in  order  to  induce 
the  breach  of  contract.  The  defendant  admitted  making 
the  agreements,  but  denied  that  plaintiff  had  any  equitable 
remedy  therefor  as  he  had  an  adequate  remedy  at  law  for 
each  breach.  Says  Bischoff,  J. :  "  The  fraudulent  intent  fol- 
lowed to  fruition  in  the  actual  inducement  of  persons  dealing 
with  the  plaintiff  to  break  their  contracts  for  the  intended  bene- 
fit of  the  defendant,  and  to  the  intended  injury  of  the  plaintiff, 
is  the  basis  of  the  defendant's  wrong  —  a  wrong  which  our 
system  of  remedial  justice  recognizes  as  the  subject  of 
relief.  That  an  action  for  damages  would  not  afford  an 
adequate  remedy  is  obvious.  The  loss  of  business  and  the  in- 
jury to  business  reputation  resulting  from  the  defendant's 

13  Ashley  v.  Dixon,  48  N.  Y.  430-  396-1903,  citing  Rice  v.  Manleij,  66 

1872;    Daly    v.    Cornwell,    34    App.  N.  Y.  82-1876;  Rich  v.  N.  T.  C.  & 

Div.    (N.    Y.)    27-1898;    54    N.    Y.  H.  R.  R.   Co.,  87  N.  Y.  392-1882; 

Supp.  107.  Boicen  v.  Hall,  L.  R.  6  Q.  B.  Div. 

u  American  Law  Book  Co.  v.  The  333-1881. 
Edward    Thompson    Co.,    41    Misc. 


376  Unfair  Business  Competition. 

acts  of  obstruction,  and  from  the  consequent  litigation  be- 
tween the  plaintiff  and  its  delinquent  subscribers,  could  not 
be  estimated  nor  proven  with  any  degree  of  certainty  for  the 
purposes  of  a  recovery;  nor  could  the  plaintiff  properly  esti- 
mate the  additional  burden  of  the  future  litigation  with  sub- 
scribers, whose  defense  would  (as  is  to  be  inferred  from  the 
past)  be  conducted  by  the  defendant  at  great  pains  and  ex- 
pense, bearing  no  relation  to  the  amount  of  the  claim,  but 
solely  in  the  interest  of  obstruction  and  for  advertising  pur- 
poses. The  invasion  of  a  legal  right  being  apparent  and  the 
inadequacy  of  relief  at  law  being  clear,  a  case  for  injunctive 
relief  is  made  out,  and,  indeed,  direct  authority  for  an  in- 
junction upon  a  very  similar  state  of  facts  is  not  wanting  " 
(p.  397).15 

A  guarantee  insurance  company  which  threatened  cancella- 
tion of  a  policy  which  could  be  canceled  only  on  five  days' 
notice,  unless  the  employer  (the  assured)  discharged  an  em- 
ployee, on  an  action  of  trespass  on  the  case  by  the  discharged 
employee  was  held  liable  in  damages.10 

The  acts  of  a  trade  union  in  inducing  miners  to  strike,  such 
as  passing  resolutions  to  direct  a  strike,  declaring  holidays, 
ordering  men  to  stop  work,  are  acts  inducing  a  breach  of  con- 
tract and  are  unlawful.  The  union  was  held  to  have 
"  initiated,"  directed,  given  orders,  "  so  that  it  is  correct  to 
say  that  they  induced  and  procured  the  workmen  to  break  their 
contracts."  17 

The  Lords  in  deciding  Allen  v.  Flood,ls  considered  that  Allen 
had  no  power  himself  to  call  out  workmen  to  inflict  damage. 
All  he  did  was  to  inform  the  employer  that  the  other  work- 

"  Citing  Stoddart  v.  Key,  62  How.  Holmes,  J. ;  Moran  v.  Dunphy,  177 

Pr.   137-1881.  Mass.    485;    Hollenbeck    v.    Restine, 

"London    Guarantee,   etc.,    Co.    v.  114  Iowa  358;   Gove  v.   Condon,  40 

Horn,     206     111.     493-1906,     citing  L.  R.  A.  382;  Perkins  v.  Pendleton, 

Quinn  v.  Leathern,  App.   Cas.  495-  90  Me.  166;  Chipley  v.  Atkinson,  23 

1901;    Chambers   v.   Baldwin,   15   S.  Fla.  206. 

W.  57.    Where  defendant  maliciously  "  South    Wales    Miners'    Fed.    v. 

became   purchaser   instead   of   plain-  Glamorgan  Coal  Co.,  App.  Cas.  239- 

tiff  and  caused  breach.     Pioyeroft  v.  49-1905;  Smithies  v.  National  Asso., 

Tayntor,    68    Vt.    219;    Vegelahn    v.  etc.,  L.  R.  1  K.  B.  310-1909. 

Gunter,    167    Mass.   92,    opinion    of  18App.  Cas.  1-1898;  §  174. 


Interference  With  a  Competitor's  Contracts,  Etc.     377 

men  would  leave  under  certain  conditions.  Such  at  least  is  the 
explanation  of  the  case  given  by  them  in  Quinn  v.  Leathern,19 
where  they  were  asked  if  Allen  v.  Flood  made  the  boycott  legal. 
A  valuable  article  on  the  New  York  law  as  to  interference  with 
contract,  by  E.  W.  Huffcutt,  is  found  in  18  Harvard  Law 
Review  423'. 

§  187.  Conditional  Contracts  —  Inducing  Breach  of  Manu- 
facturers' Contracts  with  Retailers. — He  who  sells  to  one  he 
is  bound  by  contract  with  his  vendor  not  to  sell  to,  gives  good 
title  nevertheless;  and  this  is  true  although  the  person 
so  buying  knew  at  the  time  of  purchase  of  the  existence 
and  terms  of  the  contract.  Coke  on  Littleton,  section  360, 
states:  "  If  a  man  be  possessed  of  a  horse,  or  any  other 
chattel,  real  or  personal,  and  give  his  whole  interest  or  prop- 
erty therein  upon  condition  that  the  donee  or  vendee  shall 
not  alien  the  same,  the  same  is  void  because  his  whole  interest 
and  property  is  out  of  him,  so  as  he  hath  no  possibility  of 
reverter;  and  it  is  against  trade  and  traffic  and  bargaining 
and  contracting  between  man  and  man."  Such  conditional 
contracts  are  made  with  agents  who  are  granted  exclusive 
license  to  sell  in  a  certain  territory.  These  agents  are  often 
met  by  the  competition  of  some  third  person  who  has  law- 
fully procured  elsewhere  the  goods  which  the  agent  sells. 
The  competitor,  not  having  bought  of  the  manufacturer,  and 
so  being  under  no  contract  as  to  price,  may  sell  as  he  will, 
and  may  cut  prices  and  sell  to  persons  to  whom  the  agent  is 
forbidden  to  sell.  There  is  no  breach  of  covenant  in  such 
a  case.  Both  parties  to  the  contract  of  agency  may  be 
acting  in  perfect  good  faith,  and  yet  the  agent's  business  may 
be  ruined  by  this  competition.  The  usual  method  by  which 
these  goods  are  obtained  by  those  who  undersell  the  author- 
ized agent,  is  by  inducing  some  one  of  those  under  contract 
with  the  manufacturer  to  keep  up  the  price,  to  sell  at  a  less 
price  than  that  specified  in  these  contracts.  What  is  then  the 
relationship  of  the  manufacturer  to  him  who  has  thus  broken 
his  agreement,  and  to  the  third  person  who  has  bought  the 
goods  and  induced  the  seller  to  break  his  contract? 

These  contracts  often  specify  that  the  buyer  shall  sell 
only  in  certain  specified  places.    For  instance,  the  owner  of 

"App.  Cas.  495-1901. 


378 


Unfair  Business  Competition. 


a  well-known  spring  of  mineral  water  in  Hungary  had  the 
exclusive  right  to  export  and  sell  the  water  in  Great  Britain 
and  America.  Defendant,  having  applied  to  the  owner  to 
purchase  bottled  water,  and  having  been  refused,  and  notified 
of  complainant's  rights,  purchased  in  Germany  bottles  bear- 
ing a  cautionary  notice  that  the  water  was  not  to  be  exported, 
and  sold  them  in  the  United  States  at  a  lower  price  than  the 
complainant's.  The  defendant  was  not  chargeable  with  unfair 
competition  for  so  doing,  and  the  complainant  was  without 
remedy.20 

In  National  Phonograph  Co.,  Ltd.  v.  Edison-Bell,  etc., 
Co.,  Ltd.,21  plaintiff  sold  goods  to  wholesale  dealers  under  a 
contract  that  they  should  sell  only  to  dealers  who  had  signed 
a  retailers'  agreement  to  the  effect  that  the  retailers  would 
not  sell  at  less  than  list  prices.  The  defendant  obtained  plain- 
tiff's goods  from  one  who  had  signed  this  agreement,  and 
defendant  was  one  of  those  to  whom  retailers  had  agreed  not 
to  sell.  Defendant  also  hired  persons  to  impersonate  inde- 
pendent dealers  and  so  obtain  goods  of  plaintiff  for  his  own 
use,  and  paid  the  prescribed  price  through  these  persons. 
Held,  that  the  dealings  between  the  defendant  and  the 
retail  dealer  did  not  give  any  right  of  action  to  the  plaintiff, 
as  no  actual  contract  between  the  retailer  and  the  plaintiff 


20  Apollinaris  Co.,  Ltd.  v.  Scherer, 
27  Fed.  18-1886  (C.  C.  S.  D.  N.  Y.). 

21 1  Ch.  335-1908;  National  Phono- 
graph Co.,  Ltd.  v.  Edison-Bell  Con- 
sol'd  Phonograph  Co.,  Ltd.,  24  T.  L. 
R.  201-1907.  Ell,  a  dealer  bound  by 
a  conditional  contract  for  sale  of 
goods  of  plaintiff,  sold  to  an  agent 
of  the  defendant,  who  was  on  the 
"  suspended  list "  at  trade  discount 
prices.  There  was  no  proof  that 
the  defendants  incited  or  procured 
Ell  to  violate  his  contract.  Nor 
was  their  conduct  proven  malicious. 
There  was  proof  that  agents  of  de- 
fendant represented  themselves  as 
independent  dealers  and  gave  fic- 
titious names   and   addresses.     This 


resulted  in  sales  being  made  under 
misapprehension.  The  makers  were 
intentionally  misled.  Lord  Kennedy 
sums  it  up  thus :  "  If  A,  who  knows 
that  B,  the  producer  of  an  article, 
has  stipulated  in  selling  it  to  C,  the 
factor,  that  he  shall  not  resell 
it  to  A,  procures  by  an  inten- 
tional misrepresentation  to  C  a 
sale  to  himself,  he  has  committed 
toward  B  an  actionable  wrong  (pro- 
vided that  B  can  prove  he  has  been 
thereby  damaged,  although  in  the 
particular  circumstances  B  may  have 
no  cause  of  action  against  C  in  re- 
spect of  the  transaction."  Injunction 
as  to  the  agent's  acts  was  granted, 
but  not  as  to  Ell's  acts. 


Interference  With  a  Competitor's  Contracts,  Etc.     379 

was  shown,  but  the  acts  of  the  defendant  in  inducing  the 
wholesalers  by  fraud  and  deceit  to  sell  in  breach  of  their  con- 
tract with  plaintiff,  was  an  interference  with  contract,  within 
the  meaning  of  Allen  v.  Flood,22  and  Quinn  v.  Leathern.23  In- 
junction and  damages  were  granted. 

The  National  Phonograph  case  differs  from  some  Ameri- 
can cases  in  that  there  the  wholesaler  did  not  know  when  he 
made  the  objectionable  sales  he  was  breaking  his  contract. 
One  of  the  judges  in  that  case  contended  that  there  was  no 
breach  of  the  contract  because  of  this  fact ;  although  he  says 
(p.  368) :  "  If  A,  who  knows  that  B,  the  producer  of  an  article, 
has  stipulated  in  selling  it  to  C,  the  factor  (or  wholesaler), 
that  he  shall  not  resell  it  to  A,  procures  by  an  intentional 
misrepresentation  to  C,  a  sale  to  himself,  he  has  committed  an 
actionable  wrong  (provided  that  B  can  prove  he  has  been 
thereby  damaged),  although  in  the  particular  circumstances 
B  may  have  no  cause  of  action  against  C  in  respect  of  the 
transaction."  In  this  case  it  is  to  be  noted  also  that  there 
is  no  consideration  given  to  the  character  of  the  property  of 
the  maker  whether  he  be  a  patentee  or  not. 

As  a  general  proposition  there  seems  to  be  no  rule  of  law 
or  equity  which  can  invalidate  the  title  of  one  who  thus  buys 
of  one  who  has  agreed  not  to  sell  on  the  terms  on  which  the 
sale  is  made.  If  one  makes  an  offer  of  purchase  to  a  party 
to  such  a  contract,  without  using  any  fraudulent  representa- 
tions and,  through  the  financial  attractiveness  of  the  offer  he 
makes,  induces  the  breach  of  the  contract,  it  would  seem  there 
is  no  ground  on  which  the  buyer  can  be  enjoined  or  held 
responsible  for  interference  with  contract,  when  there  is  no 
particular  property  right  in  the  original  owner  of  the  goods, 
such  as  that  given  by  patent  laws  to  patentees. 

§  188.  Inducing  Breach  of  Contracts  for  Sale  of  Goods 
Made  by  Secret  Process. —  In  cases  dealing  with  goods  made 
by  a  secret  formula,  equity  will  not  restrain  one  dealer  from 
persuading  another  to  break  a  contract  which  the  latter  has 
made  with  the  manufacturer,  which  contract  provides  that 
the  dealer  shall  sell  only  at  a  price,  and  to  customers  specified 
by  the  manufacturer.    Such  contracts  are  made  frequently  in 

22  App.  Cas.  1-1S98.  a  App.  Cas.  495-510-1901. 


380  Unfair  Business  Competition. 

the  attempt  to  keep  up  prices  and  eliminate  competition.  When 
such  a  sale  is  made  violating  a  contract  of  this  sort,  or  if  the 
maker  himself  sells  in  the  agent's  territory,  a  purchaser 
acquires  an  absolutely  good  title  as  against  the  agent  and 
maker,  and  he  may  do  with  the  goods  as  he  will.  This  is  true, 
although  the  buyer  knew  at  the  time  of  the  existence  of  a 
contract  which  forbade  the  agent  to  sell  to  him.  The  bar  to 
relief  against  such  competition  is  the  good  title  which  a  buyer 
of  personal  property  gets  under  such  circumstances.24 

This  rule  does  not  apply  to  patented  articles,  and  probably 
not  to  copyrighted  articles,  during  the  life  of  the  patent  or 
copyright.25  The  monopoly  given  by  the  statutes  governing 
patents  and  copyrights  controls  in  such  cases,  and  the  maker 
may  sell  under  such  conditions  as  he  will.  But  the  rule 
does  apply  to  goods  made  by  secret  processes.  There  no 
monopoly  exists.  Contracts  to  limit  alienation  of  personal 
property  made  by  the  process  because  it  is  secret,  are  invalid. 
The  product  of  a  secret  process,  once  sold  by  the  maker,  is 
on  a  par  in  the  market  with  sugar  or  grain,  and  may  be  dealt 
in  by  anyone.  The  Circuit  Court  of  Appeals  has  recently 
distinguished  contracts  dealing  with  the  secret  formula  itself, 
from  those  dealing  with  the  product  of  the  formula,  because 
the  goods  when  ready  for  the  market,  may  be  owned  by  some- 
one quite  distinct  from  the  owner  of  the  formula.26  The 
court  says:  "  Contracts  in  respect  of  a  restricted  use  of  the 
formula  are  not  within  the  rule  against  restraint  (of  trade), 
because  of  the  character  of  the  property  right  in  such  a  secret. 
There  can  be  no  unrestricted  use,  before  discovery  by  fair 
means,  to  which  the  owner  does  not  consent,  and  then  only  at 
the  expense  of  the  destruction  of  its  commercial  value  as  a 
secret;  but  this  is  not  the  case  with  contracts  which  affect 
only  traffic  in  the  manufactured  product  of  the  secret  formula. 
Freedom  of  traffic  in  that  is  consistent  with  its  value,  and 
does  not  involve  exposure  of  the  formula  "  (id.  p.  32).    This 

24  Apollinaris  Co.  v.  Scherer,  27  '"  See  full  discussion  in  John  D. 
Fed.  18-21-1886  (C.  C.  S.  D.  N.  Y.).  Park  &  Sons   Co.  v.   Hartman,  153 

25  See  Bobbs-Merrill  Co.  v.  Straus,  Fed.  24-1907  (C.  C.  A.  6th  Cir.)  ;  12 
210  U.  S.  339-1907.  L.  R.  A.  N.  S.  135  note. 


Interference  With  a  Competitor's  Contracts,  Etc.     381 

case  would  seem  to  hold  that  there  could  be  no  interference 
with  contracts  relating  to  the  product  of  a  secret;  but  that 
there  could  be  such  interference  with  a  contract  relating  to  the 
secret  itself,  and  that  interference  with  a  contract  as  to  the 
secret  itself  would  be  enjoined.    This  is  the  general  rule. 

Where  one  communicates  a  secret  formula,  and  contracts 
that  the  parties  shall  enjoy  a  monopoly  of  it  in  a  certain 
region  and  that  the  product  of  it  shall  not  be  sold  below  a  cer- 
tain price,  and  a  third  person  sells  it  in  these  limits,  an  account 
will  be  directed.27  One  who  procures  a  wholesaler  or  retailer, 
who  is  under  contract  with  a  maker  to  sell  goods  made  by 
secret  process  only  under  certain  conditions,  to  violate  these 
conditions  will  be  enjoined.  Such  conditions  are  usually 
against  selling  below  a  fixed  price,  or  to  persons  not  nomi- 
nated by  the  manufacturer.  It  is  said  that  the  defendant 
is  intentionally  doing  another  a  legal  injury  by  tempting  and 
persuading  him  to  break  a  contract  or  to  commit  a  breach  of  a 
trust,  under  which  the  goods  were  delivered  to  him.28 

In  Wells  &  Richardson  Co.  v.  Abraham,29  complainant  was 
a  manufacturer  of  a  proprietary  medicine  which  it  sold  only 
to  wholesale  dealers,  who  in  turn  agreed  to  sell  only  at  a  fixed 
price  and  only  to  such  retail  dealers  as  had  contracted  with 
complainant  to  retail  the  medicine  at  a  stipulated  price. 
Defendants  were  retail  merchants  who  had  not  contracted 
with  complainant  at  all,  hut  purchased  from  dealers  who  thus 
sold  in  violation  of  their  agreements  with  complainant. 
Defendants  then  sold  at  a  cut  price.  Held,  that  complainant 
was  entitled  to  an  injunction  restraining  defendants  from 
inducing  any  dealer  to  violate  his  contract  with  complainants 
by  selling  to  defendants.  "  A  is  intentionally  doing  B  a  legal 
injury.  C  intentionally  induces  A  to  do  the  injury.  He 
solicits  that  it  be  done.  He  pays  money  to  the  doer  of  it,  to 
tempt  him  to  do  the  act ;  that  is,  A  and  C  unite,  connive,  agree 
to  procure  A  to  break  his  contract,  so  that  C  may  get  com- 
plainant's goods,  which  the  latter  had  committed  to  A,  upon 
the  trust  that  they  shall  not  be  delivered  to  C  and  others 

"Fowle   v.   Park,   131   U.   S.   88-      ham,  146  Fed.  190-1906  (C.  C.  E.  D. 
1889:  33  L.  ed.  67;  9  Sup.  Ct.  658.         N.  Y.) ;  affirmed  in  149  Fed.  408. 
28  Wells  &  Richardson  Co.  v.  Abra-  29 146  Fed.  190-1906. 


382  Unfair  Business  Competition. 

similarly  situated.  In  such  an  instance,  the  law  should  have 
sufficient  inherent  integrity  to  enable  it  to  lay  fast  hold  of  A 
and  C,  and  stop  both  such  deliberate  breach  of  obligations 
and  the  advantages  that  persons  implicated  in  it  are  gaining. 
*  *  *  No  sane  conscience  can  justify  one  man  inducing 
another  to  betray  a  legal  obligation.  *  *  *  The  very 
vital  wrong  is  that  the  defendants  have  obtained  and  are 
obtaining  the  goods  by  inducing  others,  not  entitled  to  sell  to 
them,  to  make  sale  to  them,  whereby  the  defendants  come  into 
possession  by  doing  the  complainant  a  legal  injury,  a  wrong, 
that  makes  such  possession  wrongful.  *  *  *  The  law  of 
the  land  accords  with  good  morals."  Thomas,  J.  (pp.  193, 
194).      This  language  has  been  affirmed.30 

This  decision  is  not  followed  in  John  D.  Park  &  Sons  Co. 
v.  Hartman31  on  the  ground  that  the  validity  of  the  contracts 
involved  was  not  denied,  while  in  the  latter  case  the  contract 
between  maker  of  goods,  the  owner  of  the  secret,  and  the 
wholesaler  was  held  invalid  on  the  ground  that  there  is 
nothing  in  the  character  of  a  trade  secret  similar  to  the  right 
of  monopoly  granted  to  the  owner  of  a  patent,  hence  the 
owner  of  a  secret  process  cannot,  by  contract,  prevent  his 
vendee  from  obtaining  absolute  title. 

In  Garst  v.  Charles,52  plaintiff  was  a  manufacturer  of 
a  proprietary  medicine  which  he  sold  only  to  retail  druggists 
under  contracts  by  which  they  agreed  not  to  sell  it  at  less 
than  a  stipulated  price.  Defendant,  a  retail  druggist,  know- 
ing of  the  terms  on  which  plaintiff  sold  his  medicine,  pro- 
cured a  third  person  to  buy  a  quantity  on  those  terms  and 
then  to  turn  it  over  to  defendant  at  cost,  whereupon  defend- 
ant advertised  and  sold  the  article  at  a  cut  price.  Plaintiff 
was  granted  an  injunction  restraining  defendant  from  selling 
such  medicine  as  he  had  already  procured,  except  at  the  regu- 
lar price,  and  enjoining  him  also  from  thereafter  inducing 
other  persons  to  purchase  from  the  plaintiff,  and  to  resell  to 
the  defendant  in  violation  of  their  contracts  with  plaintiff. 

In  Wells  &  Richardson  Co.  v.  Abraham33  the  defendants 

80 149  Fed.  408-1906  (C.  C.  A.  2d  32187  Mass.   144-1905;   72  N.  E. 

Cir.).  839. 

31 153  Fed.  24-1907;  12  L.  R.  A.  "146  Fed.  190-1906;   affirmed  in 

N.  S.  135  note.  149  Fed.  408. 


Interference  With  a  Competitor's  Contracts,  Etc.     383 

obliterated  or  mutilated  the  marks  upon  packages  before  offer- 
ing complainant's  goods  for  sale,  and  it  was  held  that  this  act 
constituted  sufficient  evidence  of  connivance  and  participa- 
tion in  the  breach  of  the  contract. 

Other  similar  cases,  also  involving  the  sale  of  proprietary 
medicines,  are  Doctor  Miles  Medical  Co.  v.  Piatt 34  and  Doctor 
Miles  Medical  Co.  v.  Jayne  Drug  Co.55  In  some  similar 
cases  the  question  was  raised  whether  the  contracts  were  not 
invalid  as  in  restraint  of  trade,  but  this  question  is  not  con- 
sidered to  be  within  the  scope  of  this  book.  A  somewhat 
analogous  case  was  Bobbs-Merrill  Co.  v.  Strauss?6  which  is 
mentioned  below;  but  as  it  was  found  there  that  no  contract 
existed,  so  that  there  was  no  inducing  of  the  violation  of  any 
contract,  the  case  is  hardly  an  authority,  though  valuable  for 
the  discussion  in  the  opinion. 

Where  the  contract  is  personal  in  character  to  a  greater 
extent  than  in  the  eases  just  discussed,  an  injunction  has  been 
granted.  In  8 perry  &  Hutchinson  Co.  v.  Mechanics'  Clothing 
Co.37  the  complainant  was  engaged  in  the  business  of  selling 
and  redeeming  trading  stamps  which  it  sold  to  merchants 
under  a  special  contract  by  which  the  purchasers  agreed  not 
to  dispose  of  them  except  in  the  regular  course  of  retail  trade. 
The  defendants  acquired  a  quantity  of  stamps  from  mer- 
chants who  disposed  of  them  to  the  defendants  in  violation 
of  their  special  contracts  with  the  complainants.  The  de- 
fendants were  reselling  these  stamps  to  other  merchants  who 
were  already  under  contract  to  purchase  only  from  the  com- 
plainants, and  were  enjoined.  Speaking  of  this  decision  and 
of  the  railroad  ticket  cases,  Lurton,  J.,  in  John  D.  Park  & 
Sons  Co.  v.  Hartman38  says:  These  cases  "  rest  upon  the 
peculiar  character  of  the  property  rights  involved.  Neither 
of  these  cases  concern  the  buying  and  selling  of  articles  of 
general  commerce,  and  both  relate  to  things  in  the  nature  of 
contracts  personal  in  character,  and  not  to  things  which  can 
ever  become  the  subject  of  general  trade  and  traffic." 

34 142  Fed.  606-1906    (C.  C.  111.).  37128  Fed.  800-1904  (C.  C.  R.  I.). 

35 149  Fed.  838-1906  (C.  C.  Mass.).  88153  Fed.  24-31-1907   (C.  C.  A. 

36 147  Fed.  15-1906   (C.  C.  A.  2d  6th   Cir.) ;  12  L.  R.  A.  N.   S.  135 

Cir.).  note. 


384  Unfair  Business  Competition. 

§  189.  What  Interference  with  Contractual  Relations  in 
General  is  Legitimate. —  Some  methods  of  bringing  pressure 
to  bear  are  quite  legitimate,  though  the  result  may  be  to  divert 
a  rival's  trade.  Under  certain  circumstances  one  may  have  a 
perfect  right  to  threaten  a  class  of  persons  with  withdrawal 
of  patronage,  or  with  some  other  disadvantage,  if  they  deal 
with  a  rival.  The  House  of  Lords  has  held  that  it  is  not  unlaw- 
ful to  outbid  a  competitor  in  rates. 

In  the  case  of  Mogul  SS.  Co.,  Ltd.  v.  McGregor,  Gow  <&  Co.,39 
an  association  of  shipowners,  to  secure  to  themselves  a  certain 
carrying  trade,  agreed  that  the  number  of  ships  and  rate  of 
freight  should  be  regulated  by  agreement  between  themselves, 
and  offered  a  rebate  to  shippers  who  would  agree  to  ship  only 
by  their  vessels.  Other  shipowners  not  belonging  to  the  de- 
fendant's association  sent  ships  to  load  at  a  port  covered  by 
the  agreement,  and  defendants  sent  extra  vessels  to  the  same 
port,  underbid  plaintiffs  for  freight,  reduced  rates  so  low 
that  plaintiffs  could  not  get  a  remunerative  rate,  threatened 
to  dismiss  certain  of  their  agents  if  they  loaded  plaintiffs '  ves- 
sels, and  notified  shippers  that  they  would  not  receive  the 
usual  rebate  if  they  shipped  by  plaintiffs'  ships.  The  defend- 
ants were  held  not  liable  in  an  action  for  damages,  for  the 
court  considered  they  had  been  actuated  by  the  lawful  purpose 
of  increasing  their  own  trade  and  profits,  and  had  used  no  un- 
lawful means. 

A  retail  lumber  dealers'  association  agreed  not  to  deal  with 
any  wholesale  dealer  who  sold  direct  to  consumers ;  and  it  was 
the  duty  of  the  secretary  to  report,  all  such  sales  to  the  mem- 
bers of  the  association.  A  member  having  sold  to  consumers, 
the  secretary  imposed  the  fines  fixed  by  the  rules  of  the  asso- 
ciation and  threatened,  if  they  were  not  paid,  to  report  the 
transactions  to  all  the  members  of  the  association.  The  mem- 
ber then  brought  action  for  an  injunction  forbidding  the  giv- 
ing of  the  proposed  notice  and  forbidding  the  defendants  to 
combine  to  hinder  or  limit  plaintiff's  sales.  An  injunction 
was  granted,  but  on  appeal  was  dissolved;  the  court  holding 
that  any  man  might  refuse  to  deal  with  any  other  man  or  class 

8,App.   Cas.  25-1892. 


Interference  With  a  Competitor's  Contracts,  Etc.     385 

of  men,  and  that  any  number  of  men  might  agree  to  exercise 
such  right  jointly.40 

It  is  lawful,  according  to  the  Texas  court,  for  an  employer 
of  laborers  who  also  kept  a  store,  to  forbid  his  men,  on  the  pain 
of  discharge  to  trade  at  a  store  kept  by  another.  In  so  doing 
he  is  merely  seeking  to  build  up  his  own  business  to  a  certain 
extent  at  the  expense  of  the  other  storekeeper.41 

§  190.  Interference  with  a  Competitor's  Business  Gener- 
ally.— -There  are  many  ways,  other  than  by  interference  with 
contract,  of  harassing,  interfering  with,  and  6bstructing  a 
competitor  in  such  a  manner  as  to  amount  to  unfair  competi- 
tion, in  the  broadest  sense  of  the  term.  The  business  of  an- 
other may  be  unlawfully  obtained  by  harassing  his  customers 
and  salesmen,  just  as  effectively  as  by  passing  off  his  goods  as 
those  of  another.42  Certain  of  these  methods  are  mentioned 
below. 

A  hotel  keeper  made  a  contract  with  B.,  a  hack  driver,  to 
have  him  meet  trains  and  carry  passengers  to  his  hotel.  On 
the  termination  of  the  contract  with  B  a  similar  one  was  made 
with  M.,  but  B.  continued  to  use  the  name  "  Revere  House  " 
on  his  cabs  and  carriages.  On  suit  brought  by  M.,  B.  was  en- 
joined.43 

§  191.  Interference  with  Salesmen  of  a  Competitor. —  In 
Evenson  v.  Spaulding,44  Spaulding  manufactured  buggies  and 
wagons  in  Iowa  and  sold  them,  through  itinerant  salesmen,  to 
farmers  and  others  in  the  state  of  Washington.  A  voluntary 
association,  composed  principally  of  dealers  in  hardware  and 
farming  implements  in  the  state  of  Washington,  existed,  the 
object  of  which  was  to  induce  farmers  and  others  to  limit  their 
trade  to  dealers  within  the  state.  This  association  employed 
agents  to  follow  closely  Spaulding 's  salesmen,  to  interrupt 

40  Bohn  Mfg.  Co.  v.  Hollis,  54  entitled  to  injunction  to  prevent  de- 
Minn.  223-1892;  55  N.  W.  1119;  21  fendant  from  interfering  in  its  busi- 
L.  R.  A.  337.  ness  of  issuing  trading  stamps  by  in- 

41  Robinson  v.  Texas  Pine  Lands  ducing  the  violation  of  contracts 
Assn.,  40  S.  W.  843-1897   (Tex.  C.  with  it. 

C.  A.).  "Marsh  v.  Billings,  7  Cush.  322- 

42  S 'perry     &     Hutchinson     Co.     v.       1851. 

Louis  Weber  &  Co.r  161  Fed.  219-  44 150  Fed.  517-1907  (C.  C.  A.  9th 

1908  (C.  C.  111.).    Complainant  held      Cir.) ;  9  L.  R.  A.  N.  S.  904  note. 
25 


386  Unfair  Business  Competition. 

their  conversations  with  farmers,  and  dissuade  the  latter,  by 
false  statements  and  otherwise,  from  buying  Spaulding's 
goods,  and  in  various  ways  to  intimidate  and  interfere  with 
the  salesmen.  The  agents  of  the  association  very  rarely  of- 
fered any  buggies  or  wagons  for  sale ;  and  hardly  any  of  the 
members  of  the  association  dealt  in  buggies.  This  was  held 
an  unwarranted  attempt  to  destroy  complainant's  business, 
and  an  injunction  pendente  lite  was  granted. 

§  192.  Interference  by  False  Representations  to  Custom- 
ers.—  An  injunction  was  issued  against  the  Standard  Oil 
Co.  in  1904  because  of  very  similar  conduct  on  its  part.45  Its 
agents  attempted  to  ruin  the  business  of  one  Doyle  by  making 
false  representations  to  his  customers,  and  by  threats  and  in- 
timidation. It  also  harassed  his  employees  by  following  and 
interfering  with  them,  and  offering  his  customers  oil  at  a 
lower  rate,  or  for  nothing.  So  also  a  preliminary  injunc- 
tion has  been  granted  restraining  persons  who  threatened 
complainant's  booking  agents  with  loss  of  business  controlled 
by  defendant  if  they  continued  to  sell  complainant's  tickets.46 

Intimidating  customers,  as  by  a  show  of  violence,  such  as 
firing  cannon,  has  been  held  actionable.  In  Tarleton  v.  M'Gaw- 
ley,41  an  action  was  allowed  against  a  rival  trader  who,  by 
firing  cannon,  had  frightened  away  natives  on  the  African 
coast,  and  thus  prevented  plaintiff  from  trading  with  them. 

§  193.  Interference  by  Bringing  a  Multipliciity  of  Suits. 
—  The  bringing  of  a  multiplicity  of  suits,  started  not  in  good 
faith  but  for  the  purpose  of  deterring  the  public  from  purchas- 
ing from  a  rival  and  of  ruining  his  trade,  has  been  enjoined 
in  Wisconsin.  Where  a  large  number  of  infringement  suits 
were  brought,  the  prosecution  of  them  was  restrained  until 
the  questions  involved  had  been  determined  in  the  princi- 
pal suit,  the  object  of  the  multiplicity  of  suits  being  found 
to  be  to  harass  a  rival  manufacturer  and  destroy  his 
business.  "  Instances  are  not  wanting,"  says  Quarles,  D. 
J.,  "  where  patentees  make  illicit  use  of  the  courts  as  in- 

45  Standard  Oil   Co.  v.  Doyle,  118  47  Peake  N.  P.  205-1793. 
Ky.  662-1904;  82  S.  W.  271. 

46  Lloyd  Sabaudo  v.  Cubicciotti,  159 
Fed.  191-1908  (C.  C.  Pa.). 


Interference  With  a  Competitor's  Contracts,  Etc.     387 

strumentalities  of  oppression;  bring  a  multiplicity  of  suits, 
purposely  scattered  through  the  circuits,  not  for  the  honest 
purpose  of  securing  an  adjudication  in  support  of  the  patent, 
but  to  crush  a  rival  manufacturer  by  creating  a  stampede 
among  his  customers;  alarming  them  by  circulars  breathing 
threats  of  prosecution,  denouncing  the  product  of  the  rival 
concern  as  an  infringing  device,  at  the  same  time  taking  no 
step  to  bring  any  of  the  numerous  suits  to  final  hearing."48 

*"  Commercial  Acetylene  Co.  v. 
Avery  Portable  Ltg.  Co.,  152  Fed. 
642^5-1906  (C.  C.  Wis.). 


CHAPTER  XIV. 

Libel  and  Slander  of  Business  Names  and  Reputation,  and 
of  Goods  ;  False  Representation  ;  Threats  of  Prosecution, 
Etc. 

Section  194.  English  procedure  statutes  as  related  to  injunction. 

195.  Did  equity  have  jurisdiction  to  enjoin  libels  prior  to  the  Act 

of  1873? 

196.  Summary. 

197.  Importance  of  this  question  in  the  United  States. 

198.  Difference  between  trade  libel  and  personal  libel. 

199.  American  cases. 

200.  Case  of  Kidd  v.  Horry. 

201.  Right  to  restrain  issuing  of   circulars  to  customers  —  Case  of 

Emack  v.  Kane. 

202.  Theory  that  threats  of  prosecution  must  be  shown  to  warrant 

issuance  of  injunction. 

203.  Intent  to  intimidate  customers,  not  to  fairly  warn  them,  is  a 

necessary  element  of  this  kind  of  a  proceeding  to  enjoin. 

204.  Circulars  giving  notice  of  pendency  of  suit  for  unfair  compe- 

tition are  legal. 

205.  Trade  libels  not  libelous  per  se. 

206.  Preliminary  injunction  should  issue,  when  the  plaintiff's  right 

is  so  clear  as  to  be  practically    (or  is  actually),  as  by  de- 
murrer, conceded. 

207.  Statutes  as  to  libels  do  not  oust  equity  of  jurisdiction. 

The  law  relating  to  libel  and  slander  of  goods,  trade  names, 
and  business  credit  is  most  interesting  from  an  historical 
standpoint,  as  well  as  from  the  fact  that  the  decisions  on  the 
questions  involved  are  far  from  unanimous.  Many  of  the 
cases  place  squarely  before  the  court  a  state  of  facts  showing 
beyond  a  doubt  that  one  of  the  parties  to  the  action  is  suffer- 
ing continuous  and  irreparable  damage  to  his  business  or 
credit,  by  reason  of  malicious  misrepresentations  made  by  the 
other.  It  should  be,  and  undoubtedly  is,  the  impulse  of  a 
court  of  equity  in  all  such  cases,  to  give  quick  relief  to  the 
injured  party  by  injunction  against  further  use  of  the  damag- 
ing words.  This  is  not  often  done,  however,  as  the  court  is  at 
once  brought  face  to  face  with  the  various  constitutional  pro- 
visions by  which  trial  by  jury  is  required  in  all  cases  of  libel 

[38S1 


Libel  and  Slander  of  Business  Names,  Etc.        389 

and  slander,  and  in  some  instances  the  jury  is  made  the  judge 
of  both  law  and  fact.1  There  are  decisions  both  ways  as  to  the 
jurisdiction  of  equity  to  grant  relief  by  injunction  against 
false  statements  as  to  trade  and  merchandise.  The  problem  in 
these  cases  is  to  uphold  the  rights  of  free  speech  and  free  press, 
and  still  to  prevent  the  fraud,  loss,  and  injustice  which  arise 
from  defamation  of  merchandise,  credit,  and  trade. 

The  reputation  and  credit  of  business  men  are,  perhaps,  no 
more  important  and  no  more  valuable,  in  many  instances, 
nowadays  than  fifty  or  a  hundred  years  ago.  But  it  must  not 
be  forgotten  that  the  malicious  and  unscrupulous  competitor 
has  at  his  hand  to-day,  a  hundred  means  of  injuring  his  rival, 
where  formerly  he  had  one.  Half  a  century  ago  credit  was 
not  the  sensitive  thing  that  it  is  to-day,  and  credit  agencies  and 
trade  journals  were  little  known.  Mails  were  slow  and  send- 
ing letters  was  expensive;  advertising  was  in  its  infancy. 
To-day,  the  many  newspapers,  cheap  postal  rates,  cheap  print- 
ing, and  cheap  transportation,  give  an  unscrupulous  trader 
many  swift  ways  of  blasting  his  rival's  trade  reputation 
almost  before  it  is  discovered  that  he  has  begun  his  nefarious 
operations. 

Therefore,  one  studying  the  decisions  dealing  with  this 
question  should  not  forget  this  change  in  conditions;  and, 
while  it  is  true  equity  does  not  attempt  to  relieve  every  wrong, 
it  is  also  true  that  it  always  does  relieve  so  far  as  is  possible. 
It  also  adapts  itself  to  new  conditions  when  it  can  do  so  con- 
sistently with  its  fundamental  principles. 

§  194.  English  Procedure  Statutes  as  Related  to  Injunc- 
tion.—  The  necessity  for  quick  relief  in  such  cases  as  these 
has  been  recognized  and  provided  for  in  England.  The  stat- 
utes of  1854  and  1873  have  given  to  courts  of  both  law  and 
equity  the  right  to  grant  injunctions  in  cases  of  libel  and 
slander,  by  giving  to  the  chancery  courts  the  power  to  try 
libels,  and  to  the  law  courts  the  power  to  issue  injunctions. 
The  Common  Law  Procedure  Act  of  1854la  enacted  that: 
"In  all  cases  of  breach  of  contract  or  other  injury,  where  the 
party  injured  is  entitled  to  maintain,  and  has  brought  an 
action,  he  may     *     *     *     claim  a  writ  of  injunction  against 

1  N.  Y.  Const.,  art.  1,  §  8.  lm  17  &  18   Vict.,  chap.    125. 


390  Unfair  Business  Competition. 

the  repetition  or  continuance  of  such  breach  of  contract  or  other 
injury,"  etc. —  and  "  in  such  action  judgment  may  be  given 
that  the  writ  of  injunction  do,  or  do  not  issue  as  justice  may 
require;"  and  further  "  the  plaintiff  may  at  any  time  after 
the  commencement  of  his  action,  apply  ex  parte  for  an  injunc- 
tion." 

This  statute  gave  the  judges  of  the  common  law  courts  the 
power  to  issue  injunctions,  in  the  cases  specified,  to  prevent  a 
repetition  or  a  continuance  of  the  injury  for  which  the  suit 
was  brought.  It  did  not  change  the  powers  of  chancery.  ' '  Al- 
though the  power  (of  courts  of  common  law  to  issue  injunc- 
tions) had  existed  since  1854  (by  reason  of  the  Procedure  Act 
of  that  year),  there  is  no  reported  instance  of  its  exercise  by  a 
court  of  common  law  till  Saxby  v.  Esterbrook  in  1878.  "2 

The  Judicature  Act  of  1873 3  enacted  that  the  High  Court  of 
Justice  should  have  and  exercise  "  the  jurisdiction  which,  at 
the  commencement  of  this  act,  was  vested  in  or  capable  of  be- 
ing exercised  by  all  or  any  one  or  more  of  the  judges  in  the 
common  law  courts,  respectively,  sitting  in  Court  or  in 
•Chambers,  or  elsewhere,  when  acting  as  judges  or  a  judge  in 
pursuance  of  any  statute,  law,  or  custom ;  and  all  powers  given 
to  any  such  court  or  to  any  judges  or  judge,  by  any  statute; 
and  also  all  ministerial  powers,  duties,  and  authorities  inci- 
dent to  any  and  every  part  of  the  jurisdiction  so  transferred." 
Section  25,  subsection  8,  Judicature  Act  of  1873,  reads:  "  A 
mandamus  or  an  injunction  may  be  granted  or  a  receiver  ap- 
pointed by  an  interlocutory  order  of  the  court  in  all  cases  in 
which  it  shall  appear  to  the  court  to  be  just  or  convenient  that 
such  an  order  should  be  made;  and  any  such  order  may  be 
made  either  unconditionally  or  upon  such  terms  and  conditions 
as  the  court  shall  think  just;  and  if  an  injunction  is  asked, 
either  before,  or  at,  or  after  the  hearing  of  any  cause  or  mat- 
ter, to  prevent  any  threatened  or  apprehended  waste  or  tres- 
pass, such  injunction  may  be  granted,  if  the  court  shall  think 
fit,  whether  the  person  against  whom  such  injunction  is  sought 
is  or  is  not  in  possession  under  any  claim  of  title  or  other- 
wise," etc. 

2  Lord    Coleridge    in    Bonnard    v.         '  36  &  37  Viet.  c.  66,  §  16. 
Ferryman,  2  Ch.  269-1891. 


Libel  and  Slander  of  Business  Names,  Etc.         391 


§  195.  Did  Equity  Have  Jurisdiction  to  Enjoin  Libels 
Prior  to  the  Act  of  1873?—  It  is  probable  that  the  English 
Court  of  Chancery  had  jurisdiction,  prior  to  both  of  these  acts, 
to  forbid  the  publication  of  false  and  malicious  statements  re- 
garding the  quality  of  merchandise,  methods  of  manufac- 
ture, and  the  like  —  acts  which,  in  brief,  are  usually  referred 
to  as  trade  libels.  The  Court  of  Star  Chamber  granted  injunc- 
tions against  libels;4  Lord  Ellenborough  said  in  Du  Bost  v. 
Beresford5  that  the  exhibiting  of  a  painting  might  be  enjoined; 
in  Burnett  v.  Chetivood,6  the  translation  of  a  book  from  Latin  to 
English  was  forbidden.  In  Gee  v.  Pritchard,7  Lord  Eldon  pro- 
hibited the  publication  of  copies  of  letters  from  copies  secretly 
taken  before  they  were  returned  to  the  writer,  and  the  report- 
er's note  refers  to  4  Burrow's  2331-1769,  where  counsel  speak 
of  two  unrecorded  cases  holding  the  same  way,  and  said  (p. 
413) :  "  The  question  will  be,  whether  this  bill  has  stated  facts 
of  which  the  court  can  take  notice  as  a  case  of  civil  property. " 
This  decision  is  approved  by  Judge  Story.8  In  Emperor  of 
Austria  v.  Day  and  Kossuth9  a  libel  was  enjoined,  probably 
on  the  ground  of  property  rights.  In  Routh  v.  Webster10  the 
defendants  were  restrained  from  publishing  in  a  prospectus 
that  plaintiff  was  trustee  of  a  joint  stock  company,  the  court 
here  probably  acting  on  the  ground  of  plaintiff's  property 
rights.  Doctor  Clark  attempted  to  stop  a  quack  from  selling 
''Sir  James  Clark's  Consumption  Pills,"  in  Clark  v.  Freeman.11 
but  an  injunction  was  refused  on  the  ground  that  the  court 
could  not  stop  the  publication  of  a  libel.  In  Seeley  v.  Fisher12 
an  injunction  against  an  advertisement  was  refused  because 
no  claim  of  exclusive  property  was  made  by  plaintiff. 

In  Donaldson  v.  Beckett13  it  is  stated  that  one  class  of  in- 
junctions issuing  out  of  chancery  is  "  injunctions  for  printing 
unpublished  manuscripts  without  license  from  the  author." 

These  cases  are  the  English  cases  on  this  point  prior  to  the 
decision  of  Malin,  V.  C,  in  1869  in  Dixon  v.  Holden,1*  where 


4  Hudson's  Star  Chamber. 

6  2  Campb.  511-1810. 

8  2  Merivale  441-1720  note. 

7  2  Swanst.  403-1818. 

8  2  Story  Eq.  -Jur.  §  948. 

9  3  De  G.  F.  &  J.  217-1861. 


10 10  Beav.  561-1847. 

"11  Beav.  112-1848. 

12 11  Sim.  581-1841. 

"2  Brown's  Pari.  Cas.  129-1774. 

14  L.  R.  7  Eq.  488-94-1869. 


392  Unfair  Business  Competition. 

lie  said:  "  I  beg  to  be  understood  as  laying  down  that  this 
court  has  jurisdiction  to  prevent  the  publication  of  any  letter, 
advertisement,  or  other  document,  which,  if  permitted  to  go 
on,  would  have  the  effect  of  destroying  the  property  of  an- 
other person,  whether  that  consists  of  tangible  or  intangible 
property,  whether  it  consists  of  money  or  reputation." 

The  facts  of  this  case  are  stated  by  this  same  vice-chancel- 
lor in  Thorley's  Cattle  Food  v.  Massam.15  "  Mr.  Dixon  was  a 
merchant  of  great  repute  in  Liverpool,  and  he  happened  to 
employ  a  solicitor  of  that  town;  that  solicitor  thought  fit  to 
quarrel  with  him  about  his  bill  of  costs,  or  something  of  that 
kind,  and  he  persisted  in  stating  day  after  day,  in  newspapers 
and  placards  over  the  town,  that  Mr.  Dixon  had  been  a  mem- 
ber of  an  insolvent  firm  which  had  failed,  and  that  it  was 
treated  as  a  fraudulent  firm;  if  that  were  true  Mr.  Dixon's 
character  and  reputation  as  a  merchant  were  gone."  The 
opinion  was  in  part  as  follows:  "  I  am  told  that  a  court  of 
equity  has  no  jurisdiction  in  such  a  case  as  this,  although  it  is 
admitted  it  has  jurisdiction  when  property  is  likely  to  be  af- 
fected. What  is  property?  One  man  has  property  in  lands, 
another  in  goods,  another  in  a  business,  another  in  skill,  an- 
other in  reputation;  and  whatever  may  have  the  effect  of 
destroying  property  in  any  one  of  these  things  (even  in  a 
man's  good  name)  is,  in  my  opinion,  destroying  property  of 
a  most  valuable  description.  But  here  it  is  distinctly  sworn 
to,  and  cannot  be  denied  that  the  effect  of  this  will  be  seriously 
damaging  to  the  plaintiff's  business  of  a  merchant.  Now,  the 
business  of  a  merchant  is  about  the  most  valuable  kind  of 
property  he  can  well  have.  Here  is  the  source  of  his  fortune, 
and  therefore  to  be  injured  in  his  business  is  to  be  injured  in 
his  property.  But  I  go  further,  and  say  if  it  had  only  injured 
his  reputation,  it  is  within  the  jurisdiction  of  this  court  to  stop 
the  publication  of  a  libel  of  this  description  which  goes  to  de- 
stroy his  property  or  his  reputation,  which  is  his  property, 
and,  if  possible,  more  valuable  than  other  property  "  (id.  p. 
492). 

In  reading  this  case  it  should  be  remembered  that  the  act 
of  1854  did  not  in  any  way  enlarge  the  power  of  the  Chancery 

15  L.   R.   6   Ch.   Div.   582-87-1877,  14  Ch.  Div.  7G2-1880. 


Libel  and  Slander  of  Business  Names,  Etc.        393 

Court  in  which  this  proceeding  was  brought.  Hence,  this  de- 
cision was  an  announcement  of  an  enlarged  jurisdiction  of 
chancery.  To  this  proposition  Malins,  V.  C,  clung  consist- 
ently against  much  opposition,  and  it  now  seems  as  if  his  view 
was  to  be  adopted,  although  in  Mulkern  v.  Ward,19  and  in  Pru- 
dential Assurance  Co.  v.  Knott,17  Dixon  v.  H olden  was  ad- 
versely criticised. 

In  1873  came  the  Judicature  Act,  which  gave  power  to  the 
Chancery  Court  to  try  libels,  but  a  study  of  the  decisions  ren- 
dered subsequent  to  the  act  seems  to  show  that  the  doctrine 
developed  in  a  large  degree  spontaneously  regardless  of  this 
statute. 

This  review  of  the  English  cases  has  been  given  to  show  that 
the  conception  of  the  powers  of  the  Chancery  Court  has  been  a 
growth  —  a  natural  development  of  the  past  sixty  years,  and 
not  the  result  of  statute. 

Following  the  act  of  1873  came  Tlwrley's  Cattle  Food  Co.  v. 
Massam,18  Day  v.  Brownrigg,19  Hill  v.  Hart  Davies,20  and 
other  cases,  all  influenced  in  a  greater  or  less  degree  by  the 
act  of  1873. 

§  196.  Summary. —  Examination  of  the  English  cases  of 
this  character  seems  to  warrant  the  following  deductions: 

(1)  Regardless  of  any  statute,  equity  has  jurisdiction  to 
protect  business  property  from  injury  inflicted  by  publication 
of  false  statements  —  at  the  same  time  being  "  keenly  alive  to 
the  difficulty,  which  varies  greatly  with  the  circumstances  of 
each  case,  in  framing  an  injunction  which  will  protect  the 
plaintiff  without  unduly  restricting  free  speech."  The  court 
said  in  Collar d  v.  Marshall,21  on  a  motion  for  interim  in- 
junction, Chitty,  J.,  that  "  The  Court  of  Chancery,  before 
the  Judicature  Act,  had  power  to  intervene  by  injunction  to 
protect  property,  but  not  to  protect  character;  it  had  no  power 
to  try  a  libel.  Since  the  Judicature  Acts,  the  chancery  division 
has,  on  motion,  granted  injunctions  restraining  the  further 
publication  of  false  statements  calculated  to  injure  a  man's 

18  L.  R.  13  Eq.  619-1872.  "  L.  R.  10  Ch.  Div.  294-1878. 

11  L.  R.  10  Ch.  App.  142-1875.  ao  L.  R.  21  Ch.  Div.  798-1882. 

18 L.  R.  6  Ch..Div.  582-1877;  14          "  1  Ch.  571-1892,  at  p.  577. 
Ch.  Div.  762-1880. 


394  Unfair  Business  Competition. 

trade.  See  Thomas  v.  Williams.22,  The  court  always  acts  with 
the  greatest  caution,  and  is  keenly  alive  to  the  difficulty,  which 
varies  greatly  with  the  circumstances  of  each  case,  in  framing 
an  injunction  which  will  protect  the  plaintiff  without  unduly 
restricting  free  speech  "  (id.  p.  577).  This  action  was  to  re- 
strain a  placard,  which  was  as  follows :  "A  strike  is  now  on  at 
C.  &  C.'s  against  cheap  labor  and  the  sweating  system  of  con- 
tract work,"  and  Chitty,  J.,  allowed  a  statement  that  a  strike 
against  a  system  of  contract  labor,  or  the  employment  of  an 
undue  proportion  of  boys,  was  on  at  C.  &  C.'s. 

(2)  Before  the  act  of  1854  equity  could  enjoin  injury  to 
property,  and  the  jurisdiction  of  chancery  in  that  regard  was 
not  altered  in  any  way  by  that  act. 

(3)  A  man's  interest  in  the  names  of  his  merchandise,  in 
his  trade  name,  and  in  the  reputation  of  his  business  is  prop- 
erty which  a  court  of  equity  will  protect  from  destruction  or 
injury. 

The  present  condition  of  the  law  in  England  is  well  summed 
up  by  Mr.  Folkard  in  '  <  The  Law  of  Libel  and  Slander : " 23 ' '  It 
appears,  therefore,  that  (independently  of  the  statute  cited, 
viz.:  acts  of  1854  and  1873),  both  upon  principle  and  author- 
ity, the  jurisdiction  rests  on  the  injury  to  property,  such  in- 
jury being  actual  or  prospective;  but  where  the  injury  com- 
plained of  is  that  of  defamation  of  character  only,  there  is  no 
principle  of  law  nor  rule  of  equity  conferring  jurisdiction  to 
restrain  it  by  injunction.  If,  however,  the  publication  is,  or 
would  be,  if  persisted  in,  injurious  to  property,  or  if  it  amounts 
to  a  contempt  of  court,  it  may  be  restrained  by  interlocutory 
injunction;  and  not  the  less  so  because  it  is  also  libelous." 

That  other  courts  than  the  law  courts  should  have  jurisdic- 
tion of  libel  and  slander  accords  with  the  history  of  the  law 
of  defamation.  In  very  early  times  the  ecclesiastical,  Star 
Chamber  and  seignorial  courts  tried  most  of  these  cases.  At 
first  the  law  courts  had  no  remedy  for  defamation.  "And  it 
is  not  used  in  this  realm  that  pleas  of  defamation  should  be 
pleaded  in  the  King's  Court."24 

23  L.  R.  14  Ch.  Div.  864-1880.  u  Rat.  Pari.  1-133. 

"London,  1908,  p.  327. 


Libel  and  Slander  of  Business  Names,  Etc.        395 

The  early  cases  distinguished  between  spiritual  and  tem- 
poral defamations.  Most  of  these  cases  dealing  with  defama- 
tion of  a  person's  livelihood,  office,  or  business,  related  to 
callings  connected  with  the  administration  of  justice;  as  defa- 
mation of  judges  or  attorneys,  calling  merchants  bankrupts 
and  so  bringing  them  under  the  bankruptcy  statute.  The  idea 
that  damage  to  a  man's  trade  or  business  was  a  ground  of 
action  probably  arose  after  the  ecclesiastical  courts  lost  their 
power,  as  such  a  loss  related  to  temporal,  nonspiritual  affairs. 

The  Star  Chamber  Court  finally  obtained  large  powers 
as  regards  these  cases.  It  drew  its  precedents  not  from  the 
common  law  but  through  the  influence  of  its  ecclesiastical  mem- 
bers from  the  civil  law,  and  the  rules  of  law  thus  created 
were  first  set  forth  in  the  case  of  De  Libellis  Famosis.25 

It  is  said  Scroggs  was  impeached  for  trying  to  introduce  the 
practice  of  enjoining  libels  into  the  Court  of  King's  Bench.25a 

§  197.  Importance  of  this  Question  in  United  States. — 
It  must  be  remembered  that  none  of  the  cases  subsequent  to 
1873  are  of  much  value  in  America.  All  cases,  in  other  words, 
decided  after  the  act  of  1873  are  not  in  point  because  of  the 
existence  of  that  act,  which  enlarged  the  jurisdiction  of  Eng- 
lish chancery  and  so  gave  the  court  powers  which  American 
equity  courts  do  not  possess.  But  it  is  most  important  to 
the  American  courts  to  know  whether  or  not  the  English 
Chancery  Court  had  original  jurisdiction,  before  the  statutes 
to  enjoin  the  utterance  of  trade  libels ;  for  both  American  and 
English  equity  courts  are  the  development  of  the  old  English 
Chancery  Court.  If,  therefore,  that  original  Chancery  Court 
did  have  the  power  to  issue  such  injunctions,  the  American 
Equity  Court  is  not  using  one  of  its  most  important  weapons. 

Before  the  Judicature  Acts  the  Court  of  Chancery  undoubt- 
edly did  not  claim  to  have  power  to  try  a  libel,  using  that  term 
in  its  usual  legal  sense ;  but  that  is  not  the  question  first  to  be 
considered.  Rather  it  must  first  be  decided  if  the  acts  included 
in  the  misleading  term  "  trade  libel  "  are  really  libels  at  all. 

§  198.  Difference  Between  Trade  Libel  and  Personal  Libel. 
—  This  question  is  not  now  important  in  England,  as  the  stat- 

25  5  Coke  125a, 

=5a "  Judges     of    England,"     Foss. 
Yol.  VII,  p.  170. 


396  fxFAiR  Business  Competition. 

utes  referred  to  have  cleared  all  obstacles  out  of  the  way  of 
the  court  aud  quick  relief  can  there  be  afforded  in  these  cases 
by  injunction;  but  in  America  the  strict  construction  of  the 
term  ' '  libel  ' '  has  governed ;  and  all  false  statements,  whether 
as  to  trade  and  merchandise  or  as  to  character,  are  measured 
up  to  the  same  rules  of  procedure  and  remedy.  Hence  it  is 
important  here  in  the  United  States  to  know  if  there  be  any 
distinction  between  character  libel  and  trade  libel.  If  there  is 
such  a  distinction,  it  may  be  possible  to  secure  relief  by  in- 
junction in  cases  where,  in  the  past,  the  suitor  has  been  turned 
away  from  an  equity  court,  and  left  to  seek  relief  against  one 
who  is  doing  him  serious  and  constant  injury  through  an 
action  at  law. 

If  there  be  a  difference  between  trade  libel  and  character 
libel,  it  is  to  be  found  in  their  relation  to  personal  rights.  A 
libel  of  a  man's  personal  reputation  involves  his  good  name. 
That  vitally  concerns  his  standing  among  men,  and  the  repute 
of  himself  and  his  family  in  the  community.  On  the  other 
hand,  to  publish  a  statement  that  the  ejector  device  of  the 
rifle  which  he  sells  is  defective  has  no  such  effect. 

False  statements  as  to  merchandise  or  trade  are  made  for 
the  purpose  of  getting  a  rival's  trade  away  from  him.  They 
do  not  often  involve  any  criticism  of  his  character,  impute  to 
him  any  loathsome  disease,  or  charge  him  with  crime,  or  de- 
fect in  character,  in  the  sense  in  which  such  criticism  could  be 
construed  as  libel.  To  say  something  of  another  falsely 
"  which  may  impair  or  hurt  his  trade  or  livelihood,  as  to  call 
a  tradesman  a  bankrupt,  a  physician  a  quack,  or  a  lawyer  a 
knave  "26  is  undoubtedly  libel.  To  so  speak  of  a  person  is  to 
discredit  him  among  his  fellows,  to  deprive  him  of  his  neigh- 
bors' respect  and  confidence  —  to  brand  him  as  unfit  to  share 
in  the  life  of  those  about  him.  To  say  falsely  that  a  rival  is 
infringing  one's  patent;  that  a  newspaper  is  not  of  a  class 
specified  by  statute  for  publication  of  certain  advertising;27  or 
that  plaintiff's  safes  could  be  easily  opened, — 2S  is  not  a  libel  in 

"  Blackstone,  Bk.  Ill,  c.  VIII,  §  5.  23  Victor  Safe  &  Lock  Co.  v.  De- 

27  Le  Massena  v.   Storm,  62   App.  right,  147  Fed.  211-1906   (C.  C.  A. 

Div.    (N.   Y.)    150-1901;   70   N.   Y.  8th  Cir.). 

Supp.  882. 


Libel  and  Slander  of  Business  Names,  Etc.        397 

the  usual  meaning  of  the  term.  It  is  a  false  and  fraudulent 
statement,  made  to  obtain  unfairly  the  business  of  another. 
Persons  who  use  such  words  or  phrases  should  be  enjoined  at 
once.  If  these  words  are  to  be  classed  strictly  as  libels,  special 
damages  must  be  shown  to  have  resulted  from  their  use,  and 
it  may  be  difficult,  if  not  impossible,  to  show  such  damage  ex- 
cept after  a  considerable  period.  But  it  is  not  difficult  usually 
to  prove  their  falsity,  and  an  equity  court,  if  convinced  of  the 
falsity  of  the  statements  made,  should  put  an  end  to  them  by 
injunction. 

Damages  at  law  may  afford  adequate  recompense  and  relief 
for  either  a  single  utterance  of  a  libel  or  for  many  utterances 
of  a  libel  against  character.  Once  a  statement  has  been  made 
that  a  person  is  guilty  of  a  crime,  or  that  a  doctor  is  a  quack, 
the  damage  is  done.  The  libeled  person  can  recover  damages ; 
a  jury  can  at  once,  or  after  a  lapse  of  two  or  three  years,  put 
an  estimate  on  the  injury  suffered  by  the  false  statement. 
The  statement  that  a  man's  patent  is  invalid,  or  that  the 
ejector  of  a  rifle  he  manufactures  is  defective,  made  once  may, 
and  probably  would,  cause  a  damage  which  could  not  easily 
be  estimated  accurately,  and  usually  because  the  damage 
would  be  very  slight  from  a  single  statement  of  that  sort,  but 
that  it  might  well  be  very  large  in  total  cannot  be  denied. 
Any  adequate  relief  against  such  statements  must  put  a  stop 
to  them  at  once.  Customers  must  not  be  continually  frightened 
if  business  is  to  prosper. 

This  is  the  reason  for  the  statement  in  22  Cyclopedia  of 
Law  and  Procedure  ("  Cyc")  901,  that  "  a  distinction  is 
taken  between  false  statements  made  maliciously  and  those 
made  in  good  faith;  and  this  class  of  cases  hold  that  the  in- 
junction will  be  granted  where  malice  or  a  wilful  purpose  to 
inflict  injury  is  present  "  (citing  cases). 

The  decision  of  the  Massachusetts  court  that  breach  of 
trust  or  of  contract  is  necessary  to  give  equity  jurisdic- 
tion to  restrain  "  representations  as  to  the  character  and 
standing  of  the  plaintiff,  or  as  to  his  property  by  a  mercan- 
tile agency,  although  such  representation  may  be  false,  "28a  is 
to  the  same  effect. 

^-Raymond  v.  Russell,  143  Mass.  295-96-1SS7;  9  N.  E.  544. 


398  Unfair  Business  Competition. 

Speaking  before  the  Patent  Law  Association,  in  1899, 
Mr.  C.  E.  Pickard  says29  as  to  the  value  of  an  action  at  law 
against  one  who  issues  circulars  making  accusations  of  in- 
fringement against  rivals:  "  Of  course  if  he  can  prove  that 
the  circulars  in  question  are  false  and  maliciously  uttered  and 
that  he  has  been  actually  damaged  thereby,  the  manufacturer 
may,  by  a  suit  at  law,  recover  such  damages  as  he  can  prove 
he  has  actually  sustained,  *  *  *  How  difficult  —  how  prac- 
tically impossible  —  it  generally  is  to  prove  such  actual  dam- 
ages is  obvious  to  any  to  whose  attention  the  matter  has  been 
brought  and  need  not  be  discussed  here.  The  advice  we  are 
compelled  to  give  is  that  ' '  the  game  is  not  worth  the  candle. ' ' 
Some  means  should  be  provided  by  which  this  evil  may  be 
checked  at  the  source." 

§  199.  American  Cases. —  An  early  New  York  case30  held 
that,  in  the  absence  of  an  allegation  of  injury  to  plaintiff's 
property,  a  libel  would  not  be  restrained.  The  motive  in  this 
case  was  malice  and  revenge,  rather  than  trade  rivalry,  and 
the  libel  was  a  personal,  and  not  a  trade  libel,  but  the  opinion 
of  Chancellor  "Walworth  is  in  point  here  and  contains  a  sum- 
mary of  early  English  cases  dealing  with  applications  to  en- 
join libels.  In  Singer  Manufacturing  Co.  v.  Domestic  Sewing 
Machine  Co.31  an  injunction  was  sought  against  the  publica- 
tion of  the  false  statement  that  defendant's  machine,  instead 
of  complainant's,  had  been  decided  at  a  state  fair  to  be  the 
best  domestic  machine.  "  It  is  well  settled,"  say  the  court 
in  this  case,  "  that  an  injunction  will  not  be  granted  to  re- 
strain slander  or  libel  of  title,  or  of  reputation.32  Not  that 
it  is  not  a  wrong,  not  that  the  wrong  might  not  be  irreparable, 
but  simply  because  courts  of  chancery  in  the  exercise  of  the 
extraordinary  powers  lodged  in  them  have  uniformly  refused 
to  act  in  such  a  case,  leaving  parties  to  their  remedy  at  law." 
Later,  speaking  of  the  acts  of  the  defendant,  the  court  re- 
marks that  they  "  are  calculated  to  injure  the  credit  of  the 

49  Proceedings  of  Assn.,  312-1884-  32  Citing  Martin  v.  Wright,  6  Sim. 

1900.  207-1833;     Clark    v.     Freeman,    11 

*°  Brandreth  v.  Lance,  8  Paige  24-  Beav.    112-1848 ;    Seeley   v.    Fisher, 

1839.  11  Sim.  581-1841. 

M49  Ga.  70-1873. 


Libel  and  Slander  of  Business  Names,  Etc.        399 

complainant's  business  and  advance  the  business  of  the  de- 
fendant. If  a  wrong  be  capable  of  redress  before  the  courts  at 
all,  it  comes  more  nearly  within  the  definition  of  a  libel  or  of 
slander  concerning  one's  trade  or  business,  than  anything 
else.  Equity,  it  must  be  remembered,  will  not  enjoin  every 
wrong.  There  are  injuries  done  by  one  man  to  another  which 
no  law  will  remedy  *  *  *.  The  principle  is,  that  to  au- 
thorize the  writ  there  must  be  an  irreparable  injury  to  a  prop- 
erty right." 

In  the  same  year,  1873,  the  case  of  Boston  Biatite  Co.  v. 
Florence  Manufacturing  Co.33  was  decided  in  Massachusetts. 
Diatite  was  a  patented  material  used  by  plaintiff  to  make 
toilet  mirrors,  etc.,  and  it  was  a  trade-mark  name.  Defend- 
ant made  mirrors  from  another  substance  of  the  same  nature 
not  protected  by  letters  patent.  Defendant  represented  to 
plaintiff's  customers  that  plaintiff  was  infringing  patents  of 
defendant.  Injunction  was  refused.  Said  Grey,  C.  J. : 
"  The  jurisdiction  of  a  Court  of  Chancery  does  not  extend  to 
cases  of  libel  and  slander,  or  of  false  representation  as  to  the 
character  or  quality  of  the  plaintiff's  property,  or  to  his  title 
thereto  which  involves  no  breach  of  trust  or  of  confidence.' ' 
The  court  cites  Huggonson  Case,54  Gee  v.  Pritchard,3*  See- 
ley  v.  Fisher,36  Fleming  v.  Newton3'1  Emperor  of  Austria  v. 
Bay  &  Kossuth38  Mulkern  v.  Ward39  and  remarks:  "  The 
opinions  of  Vice-Chancellor  Malins  in  Springhead  Spinning 
Co.  v.  Riley,40  in  Bixon  v.  Holden41  and  Rollins  v.  Ilinks,43 
appear  to  us  to  be  so  inconsistent  with  these  authorities  and 
with  well-settled  principles,  that  it  would  be  superfluous  to 
consider  whether,  upon  the  facts  before  him,  his  decisions 
can  be  supported.  The  jurisdiction  to  restrain  the  use  of  a 
name  or  trade-mark,  or  the  publication  of  letters,  rests  upon 
the  ground  of  the  plaintiff's  property  in  his  name,  trade- 
mark,   or    letters,    and    of    the    defendant's    unlawful    use 

33 114  Mass.  69.  "3DeG.F.&  J.  217-1861. 

54  2  Atk.  469,  488-1742.  "  L.  R.  13  Eq.  619-1872. 

35  2  Swanst.  403-1818.  "  L.  R.  6  Eq.  551-1868. 

80 11  Sim.  581-1841.  °  L.  R,  7  Eq.  488-1869. 

37 1  H.  L.  Cas.  363-1848.  a  L.  R.  13  Eq.  355-1872. 


40U  Unfaik  Business  Competition. 

thereof."43  Held,  that  there  was  here  "  no  trust  or  contract 
between  the  parties  and  no  use  by  the  defendants  of  the  plain- 
tiff's name;  but  only  that  the  defendants  made  false  and 
fraudulent  representations,  oral  and  written,  that  the  articles 
manufactured  by  the  plaintiff  were  infringements  of  letters 
patent  of  the  defendant  corporation,  *     *,     and  that  the 

defendants  further  threatened  divers  persons  with  suits,  etc., 
*.  If  the  plaintiff  has  any  remedy,  it  is  by  action  at 
law."44 

The  foregoing  case  was  followed  in  Whitehead  v.  Kitson45 
in  which  it  was  alleged  that  defendant  falsely  represented  to 
persons  likely  to  buy  plaintiff's  patent  that  it  interfered  with 
a  patent  of  defendant,  resulting  in  loss  of  business  to  plain- 
tiff; and  it  was  held,  that  the  case  was  not  one  of  equitable 
jurisdiction  and  that,  on  authority  of  Boston  Diatite  Co.  v. 
Florence  Manufacturing  Co.,4G  and  Prudential  Assurance  Co. 
v.  Knott,47  the  court  had  no  jurisdiction. 

In  Life  Association  of  America  v.  Boogher4S  the  allegations 
of  the  bill  were  that  Boogher  had  been  engaged  in  the  com- 
position, publication,  and  circulation  of  false,  etc.,  statements 
respecting  the  plaintiff  *     *     "  for  the  purpose  of  injur- 

ing him,  and  in  order  to  levy  blackmail  on  the  plaintiff," 
and  that  defendant  was  insolvent  so  that  a  judgment  against 
him  for  damages  would  be  valueless.  Held,  that  there  was 
no  jurisdiction  to  restrain  the  publication. 

In  M  auger  v.  Dick49  an  action  to  restrain  defendant  from  in> 
terfering  with  plaintiff's  business  by  threats,  circulars,  and 
suits,  Dick  made  and  sold  capsules.  Mauger  left  employ  of  Dick 
and  started  "American  Soft  Capsule  Co."  And  soon  after 
Dick  issued  a  circular  stating  "  certain  parties  are  infringing 
our  trade-mark  rights  by  seeking  to  place  on  the  market  imita- 
tions of  our  soft  capsules,"  etc.,  and  threatening  to  punish 

"Citing    Routh     v.     Webster,     10  197-1846;   Wren  v.   Weild,  L.   R.   4 

Beav.   561-1847;    Leather   Cloth   Co.  Q.  B.  730-1869. 
v.  American  Leather  Co.,  4  De  G.  J.  "119  Mass.  484-1876. 

&  S.  137-1863;  affirmed  in  11  H.  L.  "114  Mass.  69-1873. 

Cas.    523-1865;    Maxwell    v.    Hogg,  "  L.  R.  10  Ch.  App.  142-1875. 

L.  R.  2  Ch.  App.  307-1867;  Gee  v.  "3  Mo.  App.  173-1876. 

Pritchard,  2  Swanst.  403-1818.  49  55  How.  Pr.  132-34-1878. 

**  Citing  Bailey  v.  Waif  or  d,  9  Q.  B. 


Libel  and  Slander  of  Business  Names,  Etc.        401 

"  any  encroachments  on  our  rights."  Held,  that  "  the 
jurisdiction  of  a  court  of  equity  does  not  extend  to  false  rep- 
resentations as  to  the  character  or  quality  of  the  plaintiff's 
property,  or  to  his  title  thereto,  when  it  involves  no  breach  of 
trust  or  contract,  nor  does  it  extend  to  cases  of  libel  or  slan- 
der. Equitable  jurisdiction  to  restrain  the  use  of  a  name  or 
trade-mark,  or  letters,  rests  upon  the  ground  of  plaintiff's 
property  in  his  name,  trade-mark,  or  letters,  and  the  unlawful 
use  thereof."  In  contrast  with  the  above  ruling  note  that  an 
injunction  was  issued  in  Croft  v.  Richardson,50  a  Special 
Term  case,  against  the  publication  of  threats  of  prosecu- 
tion for  infringement,  the  court  inferring  bad  faith  from  the 
language  used  by  defendants;  but  this  case,  especially  since 
Marlin  Fire  Arms  Co.  v.  Shields,51  which  appears  to  disap- 
prove it,  can  hardly  be  considered  authoritative.  The  decision 
stated  that  the  "  plaintiffs  claim.  *  *  *  that  the 
defendants  are  publishing  false  and  malicious  libels  concern- 
ing plaintiffs'  business  and  their  business  character  and 
transaction. ' '  This  the  state  courts  have  a  right  to  restrain.52 
The  charge  was  to  the  effect  that  plaintiffs  are  prosecuting 
a  business  which  is  an  unlawful  interference  with  the  defend- 
ants' rights,  and  are  irresponsible,  and  hope  to  make  some: 
thing  out  of  it  before  legal  proceedings  are  taken,  and  that 
their  efforts  in  that  direction  are  nefarious.  "  This  language 
is  quite  too  excessive  and  ill  chosen  to  convey  simply  informa- 
tion that  the  plaintiffs  and  their  patrons  have  no  right  to 
make  and  sell  exhibitors,  and  are  liable  to  defendants  for  so 
claiming.  At  all  events,  I  think  it  quite  safe  to  hold  that 
such  language  is  satisfactory  evidence  of  malice  until  the 
defendants  commenced  an  action  in  good  faith,  against  the 
plaintiffs  or  other  parties,  to  vindicate  the  rights  which  the 
defendants  claim  "  (p.  358). 

§  200.  The  Case  of  Kidd  v.  Horry.—  "In  1886,  application 
was  made  to  the  United  States  Circuit  Court,  Josepli  P. 
Bradley  and  William  McKennon,   Justices,  in   the   case  of 

60  59  How.  Pr.  356-18S0.  (N.   Y.)    210-1S62;    Thorlei/s   Cattle 

51 171   N.   Y.   3S4-1902;   64   N.   E.      Food  Co.  v.  Massam,  L.  R.   14  Ch. 
163 ;  59  L.  R.  A.  310.  Div.  763-1880. 

82  Citing  Snoiv  v.  Hudson,  38  Barb. 
26 


402  Unfair  Business  Competition. 

Kidd  v.  Horry,™  for  an  interlocutory  injunction  against 
"  circular  letters  which  are  alleged  to  be  libelous  and  injurious 
to  the  patent  rights  and  business  of  the  complainants;  and 
from  making  or  uttering  libelous  or  slanderous  statements, 
written  or  oral,  of  or  concerning  the  validity  of  their  letters 
patent,"  etc.  The  court  admitted  the  question  new,  saying: 
11  •  *  *  The  application  seems  to  be  altogether  a  novel 
one,  and  is  urged  principally  upon  a  line  of  recent  English 
authorities,  such  as  Dixon  v.  H olden,54  Thorley's  Cattle  Food 
Co.  v.  Massam,55  Thomas  v.  Williams,56  and  Loog  v.  Bean.57 
An  examination  of  these  and  other  cases  relied  on  convinces 
us  that  they  depend  on  certain  peculiar  acts  of  parliament 
of  Great  Britain,  and  not  on  the  general  principles  of  equity 
jurisprudence  "  (id.  p.  774) ;  and  then  added:  "  We  do  not 
think  that  the  existence  of  malice  in  publishing  a  libel,  or 
uttering  slanderous  words,  can  make  any  difference  in  the 
jurisdiction  of  the  court.  Malice  is  charged  in  almost  every 
case  of  libel,  and  no  cases  of  authority  can  be  found,  we 
think,  independent  of  statute,  in  which  the  power  to  issue  an 
injunction  to  restrain  a  libel  or  slanderous  words  has  ever 
been  maintained,  whether  malice  was  charged  or  not. 
Charges  of  slander  are  peculiarly  adapted  to,  and  require 
trial  by  jury;  and,  exercising  as  we  do,  authority  under  a 
system  of  government  and  law,  which  by  a  fundamental 
article  secures  the  right  of  trial  by  jury  in  all  cases  at  com- 
mon law,  and  which  by  express  statute  declares  that  suits  in 
equity  shall  not  be  sustained  in  any  case  where  a  plain, 
adequate,  and  complete  remedy  may  be  had  at  law,  as  has 
always  heretofore  been  considered  the  case  in  causes  of  libel 
and  slander,  we  do  not  think  that  we  would  be  justified  in 
extending  the  remedy  of  injunction  to  such  cases."58 

The  English  cases  which  the  court  here  refuses  to  recognize 
as  authority  binding  in  any  way  upon  it,  because  "An  exami- 
nation of  these  and  other  cases  relied  on  convinces  us  that 

"28  Fed.  773-76-1 S86  (C.  C.  Pa.).  M  Followed    by    Judges    Cole    and 

M  L.  R.  7  Eq.  488-1869.  Carpenter  in  Massachusetts  &  Balti- 

"L.  R.  14  Ch.  Div.  763-1S80.  more    Car    Wheel   Co.    v.   Bemis,  29 

5,L.  R.  14  Ch.  Div.  864-1880.  Fed.  95-1886   (C.  C.  Mass.). 
"  L.  R.  26  Ch.  Div.  306-1884. 


Libel  and  Slander  of  Business  Names,  Etc.        403 

tliey  depend  on  certain  peculiar  acts  of  parliament  of  Great 
Britain,  and  not  on  the  general  principles  of  equity  juris- 
prudence "  are  Dixon  v.  Hold  en,59  Thorley's  Cattle  Food  Co. 
v.  Mass  am,00  Thomas  v.  Williams?'1  and  Loog  v.  BeanS"2  It 
referred  also  to  Prudential  Assurance  Co.  v.  Knott,™  and 
Beddoiv  v.  Beddow.Gi  The  date  of  these  decisions  is  vital  in 
considering  their  authority;  for,  if  the  act  of  1854  did  not 
affect  the  jurisdiction  of  Chancery,  and  the  act  of  1873  did 
enlarge  that  jurisdiction,  all  Chancery  cases  before  1873  are 
cases  which  depend  on  the  general  principles  of  equity  juris- 
prudence and  were  authorities  on  which  the  court  in  Kidd  v. 
Horry  should  have  acted.  The  court  seems  to  have  relied  on 
cases  decided  after  1873,  with  the  exception  of  Dixon  v. 
Holden,  and  hence  on  cases  which  may  be  presumed  to  have 
been  influenced  by  that  act.  It  does  not  mention  the  cases 
decided  before  the  act,  which  hold  against  the  view  here 
adopted  by  the  court.  It  is  to  be  noted  that  this  was  an 
application  for  an  interlocutory  or  interim  injunction.  No 
proof  appears  to  have  been  offered  on  the  application  as  to 
the  falsity  of  the  alleged  libelous  statements.  This  case 
could  therefore  hardly  be  considered  authority  on  an  applica- 
tion at  trial  on  proof  of  falsity  having  been  given.  More- 
over, it  does  not  decide  what  a  "  trade  libel  "  is;  it  only  lays 
down  the  rule  that  equity  will  not  enjoin  a  libel  such  as  the 
making  of  libelous  and  injurious  statements  as  to  patents 
and  patent  rights.  What  these  statements  are,  of  course,  we 
do  not  know.  This  case  held  also  that  the  fact  that  the  de- 
fendant acted  with  malice  was  no  ground  for  granting  an 
injunction.  It  is  followed  and  upheld  in  Allegretti  Chocolate. 
Cream  Co.  v.  Rub  el. w 

§  201.  Right  to  Restrain  Issuing  of  Circulars  to  Custom- 
ers —  Case  of  Emack  v.  Kane. —  With  this  case  of  Kidd  v. 
Horry  should  be  compared  Emack  v.  Kane,m  in  which  Blod- 
gett,  J.,  granted  an  injunction  against  circulars  threatening- 
prosecution   for  infringement,   brought  in   bad   faith   to   in- 

"  L.  R.  7  Eq.  488-1869.  "  L.  R.  10  Ch.  App.  142-1875. 

90  L.  R.  14  Ch.  Div.  763-1880.  "  L.  R.  9  Ch.  Div.  89-1878. 

81  L.  R.  14  Ch.  Div.  864-1SS0.  M  83  111.  App.  558-1898. 

"L.  R.  26  Ch.  Div.  306-1884.  M34  Fed.  46-18S8  (C.  C.  111.). 


404:  Unfair  Business  Competition. 

timidate  complainant's  customers  and  destroy  his  business. 
There  was  evidence  that  there  was  no  real  intention  to  sue, 
and  defendant  had  discontinued  suits  formerly  brought,  after 
taking  proof. 

.Referring  to  Kidd  v.  Horry,  the  court  says  that  the  principle 
of  that  case,  "  concisely  stated,  is  that  a  court  of  equity  has 
no  jurisdiction  to  restrain  the  publication  of  a  libel  or  slander. 
But  it  seems  to  me  the  case  now  under  consideration  is  fairly 
different  and  distinguishable  from  the  cases  relied  upon  by  the 
defendants,  in  what  seems  to  me  a  material  and  vital  feature. 
In  Kidd  v.  Horry  the  owner  of  a  patent  sought  the  interfer- 
ence of  a  court  of  equity  to  restrain  the  defendants  from  pub- 
lishing and  putting  in  circulation  statements  challenging  the 
validity  of  his  patent  and  of  his  title  thereto,  on  the  ground 
that  such  publications  were  libelous  attacks  upon  his  prop- 
erty. Here  the  complainant  seeks  to  restrain  the  defendants 
from  *  *  *  making  threats  intended  to  intimidate  the  com- 
plainant's customers  under  the  pretext  that  the  complain- 
ant's goods  infringe  a  patent  owned  or  controlled  by  the  de- 
fendants, and  threats  that  if  such  customers  deal  in  complain- 
ant's goods,  they  will  subject  themselves  to  suit  for  such  in- 
fringement; the  bill  charging  and  the  proof  showing,  that 
these  charges  of  infringement  are  not  made  in  good  faith,  but 
with  a  malicious  intent  to  injure  and  destroy  the  complain- 
ant's business.  While  it  may  be  that  the  owner  of  a  patent 
cannot  invoke  the  aid  of  a  court  of  equity  to  prevent  another 
person  from  publishing  statements  denying  the  validity  of 
such  patent  by  circulars  to  the  trade,  or  otherwise,  yet,  if  the 
owner  of  a  patent,  instead  of  resorting  to  the  courts  to  obtain 
redress  for  alleged  infringements  of  his  patent,  threatens  all 
who  deal  in  the  goods  of  a  competitor  with  suits  for  infringe- 
ment, thereby  intimidating  such  customers  from  dealing  with 
such  competitor,  and  destroying  his  competitor's  business,  it 
would  seem  to  make  a  widely  different  case  from  Kidd  v. 
Horry,  and  that  such  acts  of  intimidation  should  fall  within  the 
preventive  reach  of  a  court  of  equity.  It  may  not  be  libelous 
for  the  owner  of  a  patent  to  charge  that  an  article  made  by 
another  manufacturer  infringes  his  patent;  and  notice  of  an 
alleged  infringement  may,  if  given  in  good  faith,  be  a  con- 


Libel  and  Slander  of  Business  Names,  Etc.         405 

siderate  and  kind  act  on  the  part  of  the  owner  of  the  patent ; 
but  the  gravamen  of  this  case  is  the  attempted  intimidation 
by  the  defendants  of  complainant's  customers  by  threaten- 
ing them  with  suits  defendant  did  not  intend  to  prosecute ;  and 
this  feature  was  not  involved  in  Kidd  v.  Horry.  I  cannot  be- 
lieve that  a  man  is  remediless  against  persistent  and  con- 
tinued attacks  upon  his  business,  and  property  rights  in  his 
business,  such  as  have  been  perpetrated  in  this  case.  It  shocks 
my  sense  of  justice  to  say  that  a  court  of  equity  cannot  re- 
strain systematic  and  methodical  outrages  like  this,  by  one  man 
upon  another's  property  rights.  If  a  court  of  equity  cannot 
restrain  an  attack  like  this  upon  a  man's  business,  then  the 
party  is  certainly  remediless,  because  an  action  at  law  in  most 
cases  would  do  no  good,  and  ruin  would  be  accomplished  be- 
fore an  adjudication  would  be  reached.  True,  it  may  be  said 
that  the  injured  party  has  a  remedy  at  law,  but  that  might 
imply  a  multiplicity  of  suits  which  equity  often  interposes  to 
relieve  from;  but  the  still  more  cogent  reason  seems  to  be' 
that  a  court  of  equity  can,  by  its  writ  of  injunction,  restrain 
a  wrongdoer,  and  thus  prevent  injuries  which  could  not  be 
fully  redressed  by  a  verdict  and  judgment  for  damages  at  law. 
Eedress  for  a  mere  personal  slander  or  libel  may  perhaps 
rjroperly  be  left  to  the  courts  of  law,  because  no  falsehood, 
however  gross  and  malicious,  can  wholly  destroy  a  man's  repu- 
tation with  those  who  know  him;  but  statements  and  charges 
intended  to  frighten  away  a  man's  customers,  and  intimidate 
them  from  dealing  with  him,  may  wholly  break  up  and  ruin 
him  financially,  with  no  adequate  remedy  if  a  court  of  equity 
cannot  afford  protection  by  its  restraining  writ." 

Ide  v.  Engine  Co.6611  is  to  the  same  effect;  but  Judge  Parker's 
comment  on  Emack  v.  Kane  in  Marlin  Fire  Arms  Co.  v. 
Shields™  is  that  "A  very  careful  examination  of  it  leads  to  the 
conclusion  that  its  attempt  to  overthrow  the  reasoning  of 
Mr.  Justice  Bradley  was  not  successful."  In  International 
TootJi  Crown  Co.  v.  CarmichaelG7a-  Jenkins,  J.,  disapproves  of 
Emack  v.  Kane  on  the  authority  of   Francis  v.  Flinn™ 

e**  31  Fed.  901.  "  44  Fed.  350. 

87 171  N.  Y.  384-95-1902;  64  N.  E.  ,7b  118  U.  S.  385. 

163;  59  L.  R.  A.  310. 


406  Unfair  Business  Competition. 

Francis  v.  Flinn6~c  was  a  case  in  which  the  complainant, 
owner  of  a  pilot  boat,  alleged  that  the  respondents  confederated 
to  destroy  his  business  by  publications  in  a  newspaper,  by 
Instituting  suits,  seeking  injunctions,  etc.,  and  the  court  dis- 
missed the  bill  on  demurrer  for  want  of  equity. 

Shoemaker  v.  South  Bend  Spark  Arrester  Co.,68  follows 
Emack  v.  Kane,  and  holds  that  the  court  has  power  to  enjoin 
interference  with  property  rights  in  patents  by  false  and 
malicious  claims  of  title,  threats  to  collect  royalties  from 
plaintiff's  customers,  etc.  This  case  is  often  cited  in  connec- 
tion with  Casey  v.  Cincinnati  Typographical  Union,69  in  which 
a  newspaper  was  enjoined  from  publishing  boycott  notices, 
and  Warren  Featherbone  Co.  v.  Landauer,™  and  Commer- 
cial Acetylene  Co.  v.  Avery  Portable  L.  Co.71  On  the  other 
hand,  in  Marx  &  H.  J.  Clothing  Co.  v.  Watson72  the  court  re- 
fused to  restrain  the  publication  of  circulars  issued  to  boycott 
the  business  of  individuals,,  no  matter  how  unjustifiable  and 
injurious  the  publication  may  be.  In  Allegretti  Chocolate 
Cream  Co.  v.  Rubel,73  the  court  refuses  to  follow  Emack  v. 
Kane,  supra,  because  in  that  case  intimidation  by  defendants 
of  plaintiff's  customers  was  by  threats  of  suit,  which  defend- 
ants did  not  intend  to  prosecute,  and  there  was  no  such  alle- 
gation in  the  Allegretti  case.  This  was  on  appeal  from  an 
order  granting  a  preliminary  injunction  against  a  circular. 

§  202.  Theory  that  Threats  of  Prosecution  Must  be  Shown 
to  Warrant  Issuance  of  Injunction. —  In  the  cases  in  which 
the  doctrine  of  Emack  v.  Kane  has  been  followed,  threats  have 
been  made  and  widely  disseminated,  to  prosecute  customers 
of  the  plaintiff  for  infringement,  it  being  shown  that  the 
threats  were  made  with  fraudulent  intent  to  break  up  plain- 
tiff's business,  and  it  would  seem  that  the  court  has  regarded 
the  proof  of  such  threats  as  necessary  to  the  right  to  demand 
an  injunction  under  this  doctrine. 

670 118  U.  S.  385.  "151  Fed.  133-1903  (C.  C.  Wis.). 

68 135  Ind.  471-1893;  35  N.  E.  280;  "  152  Fed.  645-1906  (C.  C.  Wis.). 

22  L.  R.  A.  332.  7a  168  Mo.  133-1901;  67  S.  W.  391; 

w45  Fed.  135-1891  (C.  C.  Ohio) ;  56  L.  R.  A.  951. 

12  L.  R,  A.  193  note.  "  83  111.  App.  558-1898. 


Libel  and  Slander  of  Business  Names,  Etc.        407 

The  jurisdiction  of  equity  in  these  cases  is  negatively  de- 
fined in  Edison  v.  Thomas  A.  Edison,  Jr.  Chemical  Co.7*  "  The 
case  now  in  hand,  being  one  merely  of  libel  or  defamation  of 
business  reputation,  unaccompanied  by  threats,  intimidation 
or  coercion,  or  by  any  direct  attack  upon  property  or  conduct 
of  business,  or  by  any  direct  or  indirect  creation  of  liability 
on  the  part  of  the  complainant,  is  not  within  the  equitable 
jurisdiction  of  this  court."  Where  circulars  were  distributed 
stating  that  the  goods  of  the  plaintiff  infringed  a  patent,  and 
threatened  all  persons  purchasing  complainant's  goods  with 
suit,  and  defendant  instituted  a  collusive  and  fraudulent  suit 
and  obtained  in  it  a  decree  apparently  supporting  his  patent, 
the  court  enjoined  the  use  of  this  decree  to  injury  of  complain- 
ant. "  Complainant  has  no  adequate  remedy  at  law.  *  *  * 
It  cannot  be  said  that  it  should  lie  by  and  wait  the  slow  and 
uncertain  processes  of  a  suit  for  damages  for  its  redress. 
*  *  *  The  complainant  is  rightfully  operating  under  such, 
patent,  and  it  has  no  remedy  adequate  for  the  fraud  and 
wrong  perpetrated  upon  it,  except  as  aided  by  a  court  of 
equity. ' ' 75 

Flint  owned  patents  for  a  smoke-preventing  device.  Plain- 
tiffs alleged  that  they  were  trying  to  sell  the  device  to  the  M 
Company,  and  that  defendant  maliciously  served  notice  on  the 
M  Company  that  plaintiff's  device  infringed  patents  owned 
by  defendant,  and  that  if  the  M  Company  used  plaintiff's 
device,  it  would  be  liable  for  costs  and  damages.     Plaintiffs 

7412S  Fed.  957-1904   (C.  C.  Del.).  species  of  trade  libel  that  would  not 

The    facts    were    these :     Defendant  be  restrained.     See   also  these  cases 

made   and   sold   "  Wizard   Ink   Tab-  in   which  Emack  v.   Kane   has   been 

lets"  and  a  device  called  a  "  Magno-  cited:     Kelley     v.     Ypsilanti     Dress 

Electric  Vitalizer,"  and  complainant  Stay  Co.,  44  Fed.  23;  Coeur  D'Alene 

alleged      that      through      the      name  Mitring     Co.    v.    Miners     Union,    51 

adopted  by  the  defendant,  the  names  Fed.   744;    New   York   Filter   Co.  v. 

given  to  its  goods,  and  the  fonn  of  Schwarzw alder,  58  Fed.  579;  Arthur 

its  advertisements,  it  was  misleading  v.   Oakes,  63  Fed.  361. 
the    public    into    supposing    that    its  76  Grand  Rapids  School   Furniture 

worthless  devices  were  the  invention  Co.  v.  Haney  School  Furniture  Co., 

of    complainant,    and    thus    injuring  92    Mich.    558-64-1892;    52    N.    W. 

his  reputation  and  his  business  as  an  1009;  16  L.  K.  A.  721. 
inventor.      This    was    treated    as    a 


408  Unfaiu  Business  Competition. 

also  averred  that  defendant  served  a  like  notice  on  others; 
that  plaintiffs  were  financially  responsible,  and  that  they  be 
lieved  defendant  did  not  intend  to  sue  them,  or  their  customers, 
but  intended  to  continue  the  false  notices.  Injunction  was 
refused,  and  Black,  J.,  said  (p.  501)  :  "  We  live  under  a  written 
constitution  which  declares  that  the  right  of  trial  by  jury  shall 
remain  inviolate ;  and  the  question  of  libel  or  no  libel,  slander 
or  no  slander,  is  one  for  the  jury  to  determine.  Such  was 
certainly  the  settled  law  when  the  various  constitutions  of 
this  state  were  adopted,  and  it  is  all-imjoortant  that  the  right 
thus  guarded  should  not  be  disturbed.  It  goes  hand  in  hand 
with  the  liberty  of  the  press  and  free  speech.  For  unbridled 
use  of  the  tongue  or  pen  the  law  furnishes  a  remedy.  In 
view  of  these  considerations  a  court  of  equity  has  no  power 
to  restrain  a  slander  or  libel,  and  it  can  make  no  difference 
whether  the  words  are  spoken  of  a  person  or  his  property.  '* 
The  court  then  held  that  the  element  of  "  unfair  competition 
which  results  in  the  loss  of  business,  owing  to  the  dread  men 
have  of  law  suits,"  will  not  give  equity  jurisdiction,  because 
libel  and  slander  are  generally  accompanied  with  loss  of  busi- 
ness. No  mention  is  made  of  Emack  v.  Kane,  although  it 
would  seem  in  point  and  was  cited  in  appellant's  brief.70 

This  case  may  be  distinguished  from  those  holding  that  an 
injunction  is  warranted  against  libel  and  slander,  in  that  there 
is  no  continuing  wrong  here,  no  irreparable  injury  the  damage 
from  which  it  is  impossible  to  assess.  An  action  at  law  might 
give  damages  that  would  compensate  the  loss  of  the  plaintiff, 
but  there  are  many  cases  where  the  loss  cannot  be  estimated. 

§  203.  Intent  to  Intimidate  Customers,  Not  to  Fairly  Warn 
Them,  is  a  Necessary  Element  of  this  Kind  of  Proceeding  to 
Enjoin. —  The  circumstances  attending  an  issue  of  circulars 
threatening  litigation  should  indicate  bad  faith.  ' '  The  question 
whether  the  patent  owner  is  acting  in  good  faith  in  advertising 
his  claims  to  the  manufacturer's  customers  by  circulars  or 
letters,  can  seldom  be  determined  from  the  contents  of  the 
communication  alone,  and,  like  all  questions  of  intent,  must 

76  Flint  v.  Hutchinson  Smoke 
Burner  Co.,  110  Mo.  492-1S92;  19 
S.  W.  S04;  16  L.  R.  A.  243. 


Libel  and  Slander  of  Business  Names,  Etc.        409 

generally  be  determined  by  the  extrinsic  facts."77  For  in- 
stance, tne  National  Harrow  Company  sent  out  numerous  cir- 
culars and  letters  claiming  the  Adriance  Company  were  in- 
fringing their  patents,  and  threatening  with  suit  all  dealers  sell- 
ing the  Adriance  harrow.  The  lower  court  held  that  all  state- 
ments in  said  circulars  and  letters  were  true,  and  declined  to 
enjoin  them.  The  court  said:  "  When  the  manufacturer  is  fi- 
nancially responsible,  is  accessible,  and  his  infringements  read- 
ily provable,  and  when  the  patent  owner  is  financially  able,  and 
is  one  who  makes  it  his  sole  business  to  grant  licenses,  and  is 
under  a  duty  to  his  licensees  to  prosecute  extensive  infringers, 
the  sending  of  such  circulars  to  customers  would  seem  to  be 
merely  a  preliminary  or  cumulative  measure,  and  the  bring- 
ing of  an  infringement  action  the  paramount  and  imperative 
proceeding.  As,  ordinarily,  the  patent  owner  would  be  prompt 
and  zealous  to  assert  his  claims,  if  he  halts  and  purposely  pro- 
crastinates and  attempts  to  effect  by  threats  and  manifestoes, 
that  which  he  can  compel  by  the  strong  hand  of  the  law,  a 
strong  inference  arises  that  he  has  not  any  real  confidence  in 
his  pretensions.  This  inference  becomes  irresistible  if  he 
refuses  to  bring  suit  during  a  considerable  period  of  time 
when  the  alleged  infringement  is  open,  notorious  and  defiant, 
and  so  extensive  as  to  threaten  destruction  to  his  alleged  ex- 
clusive rights.  The  indicia  of  bad  faith  are  persuasive  in  the 
present  case.  It  is  impossible  to  read  the  communications 
warning  complainant's  customers  against  selling  its  harrows, 
with  which  the  defendant  seems  to  have  flooded  the  country, 
without  being  led  to  believe  that  they  were  inspired  by  a  pur- 
pose to  intimidate  the  complainant's  customers,  and  coerce  the 
complainant,  by  injuring  its  business,  into  becoming  a  licensee 
of  the  defendant.  In  view  of  its  failure  to  bring  an  infringe- 
ment action,  under  circumstances  which  made  an  action  prac- 
tically compulsory,  the  defendant  cannot  shelter  itself  behind 
the  theory  that  the  circulars  were  merely  legitimate  notices 

"Adriance,  Piatt  &  Co.  v.  National       (C.  C.  A.  2d  Cir.)  ;  58  C.  C.  A.  163; 
Harrow   Co.,  121   Fed.  827-30-1903      49  L.  R.  A.  755. 


410  Unfair  Business  Competition. 

of  its  rights.  We  are  satisfied  tliat  they  were  sent,  not  for 
the  purpose  of  self-protection,  but  in  execution  of  the  defend- 
ant's threat  to  stop  the  complainant  from  building  harrows  by 
other  means  than  legal  remedies.  " 

Hovey  v.  Rubber  Tip  Pencil  Co.78  points  out  the  same  dis- 
tinction, and  holds  that  circulars  threatening  litigation  cannot 
be  interfered  with,  unless  bad  faith  be  shown. 

It  is,  of  course,  possible  that  such  circulars  may  be  dis- 
tributed in  good  faith  to  warn  against  infringement,  and  in 
doing  so  commit  no  wrong.  It  is  the  fraud  that  gives  the 
right  to  an  injunction.  Bad  faith,  the  intent  to  destroy  the 
business  of  another,  and  hence  danger  to  property  rights,  are 
the  grounds  given  by  the  Circuit  Court  of  Appeals  on  which 
equity  may  interfere.  An  equity  court  will  not  enjoin  a  per- 
son from  asserting  his  belief  that  he  owns  title  to  property. 
"Where  the  record  does  not  make  it  clear  that  statements  made 
by  defendant  are  either  malicious  or  false,  equity  will  not  act.79 
A  circular  of  warning  and  stating  that  suit  had  been  started, 
which  has  been  adjudged  to  be  proper,  is  found  at  151  Fed.  134. 

If  the  circular  is  issued  in  bad  faith,  which  fact  is  shown  by 
neglect  to  bring  suit,  it  may  be  enjoined.80  If  the  complain- 
ant's bill  be  true,  it  has  an  undoubted  right  to  warn  the  public 
against  the  infringement  of  its  trade-mark;  that  question 
should  not  be  determined  on  the  mere  allegations  of  the 
parties81  (id.  p.  135). 

"  Where  notices  are  given  or  circulars  distributed  in  good 
faith  to  warn  against  infringement,  no  wrong  whatever  is 
committed;  but  where,  as  is  here  averred,  they  are  not 
made  or  issued  with  such  intent,  but  in  bad  faith,  and  solely 
for  the  purpose  of  destroying  the  business  of  another,  a  very 
different  case  is  presented.  In  such  a  case  property  rights  are 
fraudulently  assailed,  and  a  court  of  chancery,  whose  inter- 


na  C" 


57  N.  Y.  119-1874.  81  Adriance,  Piatt  &  Co.  v.  National 

79  Everett  Piano  Co.  et  al.  v.  George  Harrow  Co.,  121  Fed.  827-1903  (C. 
P.  Bent,  60  111.  App.  372-1895.  C.  A.  2d  Cir.) ;  58  C.  C.  A.  163;  and 

80  Warren  Featherstone  Co.  v.  Lan-  A.  B.  Farquhar  Co.  v.  Same,  102 
dauer,  151  Fed.  130-1903  (C.  C.  Fed.  714-1900  (C.  C.  A.  3d  Cir.); 
Wis.).  42  C.  C.  A.  600;  49  L.  R.  A.  755. 


Libel  and  Slander  of  Business  Names,  Etc.        411 

position  is  invoked  for  their  protection,  should  not  refuse  to 
accord  it. ' ' 82 

It  is  interesting  to  note  that  the  position  taken  hy  the  Circuit 
Court  of  Appeals  in  this  Farquhar  case  is  the  same  position 
taken  by  the  English  courts  in  cases  which  were  not  considered 
authority  in  Kidd  v.  Horry,  supra,  viz.,  that  a  man's  trade 
reputation  and  the  reputation  of  his  goods  is  property  which 
equity  must  protect. 

§  204.  Circulars  Giving  Notice  of  Pendency  of  Suit  for 
Unfair  Competition  Are  Legal. — A  complainant,  in  a  suit  for 
unfair  competition,  may  issue  circulars  to  the  trade  to  give 
notice  of  the  pendency  of  the  suit  and  of  the  claims  made  by 
him  where  he  acts  in  good  faith  and  limits  the  claims  to  the 
allegations  of  the  bill.  The  issuance  of  such  circulars  will  not 
be  enjoined  in  advance  of  hearing,  upon  a  mere  denial  of  the 
allegations  of  the  bill.83 

§  205.  Trade  Libels  Not  Libelous  Per  Se.— Trade  libels 
are  not  libelous  per  se.  The  damage  must  be  alleged  and 
proved  in  these  cases.  Special  damage  not  being  alleged,  it 
is  not  actionable  to  say  that  goods  manufactured  by  a  rival 
dealer  are  "  bad  "  or  "  inferior."  To  be  actionable  per  se, 
the  words  used  in  such  a  case  should  import  that  the  dealer 
in  question  is  guilty  of  deceit  or  fraud  in  manufacturing  or 
vending  the  goods.S4  "  Words  relating  to  quality  of  articles 
made,  produced,  furnished  or  sold  —  though  false  and  ma- 
licious—are not  actionable  without  special  damage."85  An 
action  based  on  a  statement  that  the  "  Wall  Street  Journal  " 
was  not  a  newspaper,  within  the  meaning  of  a  certain  stat- 
ute;86 that  A  had  not  sold  B  any  first-class  goods,  hence  cus- 

*2A.  B.  Farquhar  Co.  v.   National  171  N.  Y.  384-1902;  64  N.  E.  1G3; 

Harrow   Co.,  102   Fed.   714-15-1900  59  L.  R.  A.  310. 

(C.  C.  A.  3d  Cir.)  ;  42  C.  C.  A.  600;  m  Le   Massena  v.   Storm,   62   App. 

83  Warren  Featherbone  Co.  v.  Lan-  Div.    (N.   Y.)    150-1901;    70   N.   Y. 

dauer,    151    Fed.    130-1903    (C.    C.  Supp.  882.    Plaintiff  was  the  adver- 

Wis.).  tising    agent    of    the    "Wall    Street 

6<  Tobias  v.  Harland,  4  Wend.  (N.  Journal,"  for  which  he  solicited  the 

Y.)  537-1830.  publication  of  legal  notices,  under  a 

**  Dooling  v.  Budget  Pub.  Co.,  144  contract  by  which  he  shared   in  the 

Mass.  258-18S7;  10  N.  E.  S09.     See  profits   of   the   business.     Defendant 

also  Marlin  Fire  Arms  Co.  v.  Shields,  represented   to   persons   from   whom 


412 


Unfair  Business  Competition. 


tomers  could  not  get  that  quality  from  B;87  that  plaintiff's 
safe  could  be  easily  opened,88  are  cases  in  which  damages  must 
be  alleged  and  proved. 

But  for  the  defendant  to  say  of  the  plaintiff,  an  ice  machine 
maker,  to  a  customer  from  whom  both  were  seeking  an  order, 
that  the  plaintiff  would  be  unable  to  fulfill  the  contract,  was 
a  second-hand  dealer,  and  did  inferior  labor,  was  a  "  scab  " 
establishment,  and  had  no  mechanic  in  its  employ,  is  libelous 
per  se;'9  and  where  words  used  are  libelous  per  se  no  injunc- 
tion ought  to  issue.  There  is  no  continuing  damage.  For 
each  statement  of  that  sort  made  by  the  defendant  a  substan- 
tial amount  of  damages  might  be  collected.  Such  a  case  differs 
materially  from  the  cases  where  continued  publication  of 
statements,  none  of  which  alone  could  be  shown  to  have  caused 
serious  damage,  was,  nevertheless,  wrecking  the  plaintiff's 
business.  Such  a  case  was  Martin  v.  Shields?0  The  Marlin 
Company  manufactured  rifles.  Shields  conducted  "Recrea- 
tion," a  magazine.  The  Marlin  Company  withdrew  its  adver- 
tising from  said  magazine,  after  defendant  advanced  his  rates. 


plaintiff  solicited  advertisements  that 
the  "  Wall  Street  Journal  "  was  not 
such  a  newspaper  as  the  statute  con- 
templated for  the  insertion  of  legal 
notices.  Held,  that  as  to  plaintiff 
such  a  statement  was  not  actionable 
per  se,  and  that  plaintiff  could  re- 
cover for  loss  of  business  only  by 
pleading  and  proving  special  dam- 
age. 

67  Boynton  v.  Shaw  Stocking  Co., 
146  Mass.  219-1888;  15  N.  E.  507. 
Defendant,  a  manufacturer  of  ho- 
siery, published  in  the  papers  a  cau- 
tion to  the  public  not  to  form  an 
opinion  of  its  hosiery  from  goods 
advertised  by  plaintiff  as  of  "  first 
quality,"  since  they  had  been  sold  to 
him  as  "  damaged."  Held,  that  the 
words  were  not  fairly  to  be  con- 
strued as  imputing  fraud  to  plain- 
tiff, and  were  not  libelous  per  se. 

88  Victor    Safe     &     Lock     Co.    v. 


Deright,  147  Fed.  211-1906  (C.  C. 
A.  8th  Cir.).  Defendant,  a  dealer 
in  safes,  wrote  to  a  person  doing 
business  with  plaintiff,  a  manufac- 
turer of  safes,  charging  that  plain- 
tiff's safes  were  strongly  constructed 
but  could  easily  be  opened.  Held,  on 
demurrer,  that  as  no  special  damage 
was  alleged,  no  action  for  libel  lay. 
The  language  used  was  construed  as 
merely  in  disparagement  of  the 
quality  of  plaintiff's  goods,  and  not 
as  necessarily  casting  a  damaging 
imputation  upon  the  plaintiff  in  re- 
spect of  its  trade  (in  which  case  no 
special  damage  need  have  been 
alleged). 

88  Pennsylvania  Iron  Works  Co.  v. 
Henry  Voght  Machine  Co.,  29  Ky. 
L.  Rep.  861-1906;  96  S.  W.  551; 
8  L.  R.  A.  N.  S.  1023. 

80 171  N.  Y.  304-1902;  64  N.  E. 
163. 


Libel  and  Slandek  of  Business  Names,  Etc.        413 

Defendant  then  published  letters,  purporting  to  be  from  cor- 
respondents, reflecting  on  the  Marlin  rifle.  These  letters  were 
shams,  written  by  the  defendant  himself,  to  force  the  plaintiff 
to  advertise  with  him,  or  failing  in  that  "  to  gratify  his 
malice."  In  defense,  it  was  said  that  the  "  complaint  con- 
tains no  allegation  of  any  statement  made  against  the  char- 
acter or  conduct  of  the  plaintiff,"  The  defendant  criticized 
not  the  plaintiff,  but  its  gun.  In  Tobias  v.  Harland,91  the  court 
(p.  309),  "  holds  that  when  words  are  spoken  not  of  the  trade, 
or  manufacturer,  but  of  the  quality  of  the  article  he  makes  or 
deals  in,  to  render  them  actionable  per  se,  they  must  import 
that  the  plaintiff  is  guilty  of  deceit  or  malpractice  in  making  or 
vending  them. ' '  The  plaintiff  was  unable  to  say  to  what  extent 
it  was  damaged  by  said  publications  and  there  was  no  allega- 
tion of  special  damage.  The  court  then  cites  Le  Massena  v. 
Storm,92  Kennedy  v.  Press  Pub.  Co.,  93  and  Dooling  v.  Budget 
Publishing  Co.,94  to  show,  in  the  words  of  the  Dooling  case,  that 
"  words  relating  merely  to  the  quality  of  the  articles  made, 
produced,  furnished,  or  sold  by  a  person,  though  false  and 
malicious,  are  not  actionable  without  special  damage."  The 
Marlin  Company  asked  the  injunction  (1)  "  to  avoid  multi- 
plicity of  actions,  (2)  because  of  the  impossibility  of  ascertain- 
ing, identifying  or  establishing  according  to  legal  principles, 
any  measure  of  damage. ' '  The  court  in  addressing  itself  to  the 
question  "whether  equity,  which  creates  neither  rights  nor 
liabilities,  has  heretofore  assumed  jurisdiction  to  restrain  the 
publication  of  criticisms  unjustly  affecting  the  merits  of 
articles  of  property  belonging  to  a  plaintiff  when  such  publica- 
tion will  not  support  an  action  at  law,"  95  refused  to  grant  an 
injunction  and  left  the  plaintiff  to  his  action  for  damages. 

81  4  Wend.  (N.  Y.)  537-1S30.  70-1873;  Mauger  v.   Dick,  55   How. 

M62App.  Div.  (N.  Y.)  150-1901;  Pr.    132-1878;    Kicld   v.    Horry,   28 

70  N.  Y.  Supp.  882.  Fed.   773-1886    (C.   C.   Pa.);   Balti- 

93  41  Hun  (N.  Y.),  422-1S86.  more   Car   Wheel    Co.   v.   Bemis,   29 

M144  Mass.   258-1887;   10   N.   E.  Fed.  95-1886   (C.  C.  Mass.);  Mayer 

809.  v.    Journeymen    Stonecutters'   Assn., 

mBrandreth  v.  Lance,  8  Paige  (N.  47  N.  J.  Eq.  519-1890;  20  Atl.  492; 

Y.)    24-1839;   Eden   Injunction    (3d  Francis    v.    Flinn,    118    U.    S.    385- 

ed.)  p.  372;  Singer  Mfg.  Co.  v.  Do-  1886;  30  L.  ed.  165;  6  Sup.  Ct.  1172. 
mestic   Saving  Machine   Co.,  49   Ga. 


414  Unfair  Business  Competition. 

This  decision  then  meant  that  equity  could  not  enjoin  a 
newspaper  that  published  false  and  sham  letters  describing 
alleged  defects  the  writer  knew  did  not  exist  in  goods,  on  the 
ground  that  equity  cannot  try  a  libel.  It  is  difficult  to  agree 
with  the  reasoning  of  this  decision.  Just  how  the  freedom 
of  the  press  is  seriously  endangered  by  restraining  a  malicious 
person  from  publishing  untrue  statements  as  coming  from 
nonexisting  persons  to  the  effect  that  the  ejector  of  the  Marlin 
rifle  is  faulty,  is  difficult  to  see.  This  case  was  admittedly  a 
libel  of  goods.  Furthermore,  the  fundamental  reason  for  the 
trial  by  jury  was  waived  by  the  defendant  himself,  for  by  his 
demurrer  he  admitted  that  his  statements  were  false  and 
untrue.  The  court  ignored  what,  it  is  believed,  will  eventually 
be  the  basis  on  which  equity  will  give  relief  in  similar  cases 
in  the  future,  viz.,  the  fact  that  the  good  repute  of  merchan- 
dise is  property.  The  reputation  of  the  Marlin  rifle  for 
having  an  effective  ejector  is  property,  is  valuable;  and,  for 
an  equity  court  to  sit  by  and  see  the  reputation  of  that  article 
injured  by  statements  of  the  character  of  those  disclosed  here 
and  which  the  defendant  himself  admitted  to  be  untrue,  is  to 
take  a  narrow  view  of  the  powers  of  equity  which,  it  is  be- 
lieved, its  history  does  not  warrant.  In  considering  the  value 
of  this  decision  it  is  significant  that  in  1904,  two  years  later, 
subsection  8  of  section  364  of  the  Penal  Code  of  New  York  was 
enacted,  which  is  aimed  to  relieve  against  all  sorts  of  libels 
of  the  character  of  that  uttered  by  Shields,  by  making  them 
misdemeanors.     The  text  of  the  section  is  given  in  the  note.9* 

§  206.  Preliminary  Injunction  Should  Issue,  When  the 
Plaintiff's  Right  is  so  Clear  as  to  be  Practically,  or  is  Actu- 
ally  (as  by  Demurrer)   Conceded. —  On  the  question  of  the 

M  "Any   person,   firm,   corporation,  purchase  of  such  merchandise,  or  the 

or     association,     or     any     employee  possession  of  rewards,  prizes,  or  dis- 

thereof,   who,   in    a   newspaper,    cir-  tinctions,    conferred    on    account    of 

culai*,  or  other  publication  published  such  merchandise,   or   the  motive   or 

in  this  state,  knowingly  makes  or  dis-  purpose  of  a  sale,  intended  to  give 

seminates  any  statement  or  assertion  the   appearance   of   an    offer   advan- 

of  fact  concerning  the  quantity,  the  tageous  to  the  purchaser  which  is  un- 

quality,  the  value,  method  of  produc-  true    or   calculated   to  mislead,   shall 

tion,  or  manufacture,  or-  the  reason  be  guilty  of  a  misdemeanor."     Pen- 

for  the   price   of  his   or   their   mer-  alty  not  less  than  $25  nor  more  than 

chandise,  or  the  manner  or  source  of  $100  for  each  offense. 


Libel  and  Slander  of  Business  Names,  Etc.        415 

right  of  the  English  court  to  grant  an  injunction,  on  an  in- 
terim or  interlocutory  application,  presumably  under  the 
Judiciary  Acts,  it  was  said  in  Coulson  &  Sons  v.  Coulson 
&  Co.:97  "  To  justify  the  court  in  granting  an  interim  injunc- 
tion, it  must  come  to  a  decision  upon  the  question  of  libel  or 
no  libel,  before  the  jury  have  decided  whether  it  is  a  libel  or 
not.  Therefore  the  jurisdiction  is  of  a  delicate  nature.  It 
ought  only  to  be  exercised  in  the  clearest  cases,  where  any 
jury  would  say  that  the  matter  complained  of  was  libelous, 
and  where,  if  the  jury  did  not  so  find,  the  court  would  set 
aside  the  verdict  as  unreasonable."  Such  cases  are  rare,  of 
course,  but  they  occur.  Again  in  Warren  Featherbone  Co. 
v.  Landauer,"  it  was  said  that  "  if  the  defendant,  who  ap- 
plied for  an  injunction  to  restrain  plaintiff  from  issuing  cir- 
culars stating  this  action  had  been  begun,  came  with  an  ad- 
judication in  another  court  upon  the  validity  of  the  complain- 
ant's trade-mark,  we  might  follow  that  without  proof  and 
grant  an  injunction;  but  *  *  *  there  has  never  been  an 
adjudication  of  the  question.  Such  relief  has  been  granted  in 
several  cases,  sometimes  on  the  application  of  the  defendant, 
though  more  generally  upon  the  application  of  the  complain- 
ant, and  upon  final  hearing  ""  (p.  133). 

Where  an  insurance  agent  who  left  plaintiff's  employ  uttered 
untrue  and  damaging  statements  to  the  effect  that  plaintiff 
was  about  to  abandon  a  part  of  its  business,  the  court  said: 
"  It  is  urged  that  the  injury  is  a  continuing  one,  for  which 
there  is  no  accurate  measure  of  damages,  and,  therefore,  is 
within  the  province  of  equity.  But  even  in  that  class  of  cases 
the  complainant's  right  must  be  so  clear  as  to  be  practically 
conceded,  or  it  must  first  be  established  by  the  verdict  of  a 
jury."  1     Publication  of  a  newspaper  article  to  the  effect  that 

"3  Times  L.  R,  846-18S7.  v.  Same,  102  Fed.  714-1906   (C.  C. 

M151  Fed.  131-1903  (C.  C.  Wis.).  A.  3d  Cir.) ;  42  C.  C.  A.  600;  49  L. 

M  Citing  Emack  v.  Kane,  34  Fed.  R.  A.  755. 

46-1888  (C.  C.  111.);  Adriance,  Piatt  1  Baltimore  Life  Insurance   Co.   v. 

&   Co.  v.  National  Harrow  Co.,  121  Gleisner,   202    Pa.    St.   386-88-1902; 

Fed.  827-1903   (C.  C.  A.  2d  Cir.);  51  Atl.  1024. 
58  C.  C.  A.  163;  A?B.  Farquhar  Co. 


416  Unfair  Business  Competition. 

a  hotel  is  about  to  bo  sold  for  use  as  a  club,  when  that  is  not 
the  fact,  is  a  good  cause  of  action  at  law  as  a  libel.2 

§  207.  Statutes  as  to  Libels  Do  Not  Oust  Equity  of  Juris- 
diction.—  The  fact  that  there  exists,  as  in  New  York,  a  penal 
statute  forbidding  acts  which  constitute  trade  libel,  is  not  an 
excuse  for  the  failure  of  a  court  of  equity  to  enjoin  such  acts. 
If  a  trespasser  begins  to  tear  down  a  building,  the  fact  that 
a  statute  exists  forbidding  malicious  mischief,  or  that  the 
owner  has  an  action  for  trespass,  is  no  reason  for  an  equity 
court  refusing  to  enjoin  such  an  act.  When  an  irreparable 
and  continuing  unlawful  injury  is  threatened  to  private  prop- 
erty and  business  rights,  equity  will  generally  enjoin  on  behalf 
of  the  person  whose  rights  are  to  be  invaded,  even  though  an 
indictment  on  behalf  of  the  public  will  also  lie.3 

Mr.  Eobert  P.  Clapp,  in  a  valuable  note  on  this  subject  in 
23  Am.  Law  Eeg.  N.  S.  707-14-1884,  says:  "  The  greater  pro- 
tection afforded  by  the  English  courts  is  demanded  by  a  just 
regard  for  the  vastness  and  variety  of  our  commercial  inter- 
ests. Our  jurisprudence  must  in  some  way  meet  this 
demand."  If  that  statement  was  true  in  1884,  it  is  many  times 
more  so  now.4 

To  summarize.  English  courts  are  now  granting  injunc- 
'tions  against  many  forms  of  trade  libel  under  the  powers 
granted  by  the  act  of  1873.  The  act  does  not  give  a  com- 
plainant such  relief  as  a  matter  of  right;  for  granting  the 
writ  is  always  in  the  discretion  of  the  court.  It  has  generally 
been  considered  and  stated  by  courts  here  and,  it  must  be  said, 
in  most  instances  without  fully  understanding  the  authority 
of  the  English  cases,  so  far  as  can  be  judged  from  the  opin- 
ions rendered,  that  equity  cannot  enjoin  or  try  a  libel  of  goods 
or  business,  a  trade  libel.  Because  of  this  apparent  obstacle, 
the  American  courts  admit  they  are  powerless  to  give  relief  in 
many  cases  where  they  themselves  consider  relief  ought  to  be 
granted.    As  a  commentary  on  this  condition,  it  is  interesting 

2  A.  D.   Wright  v.  J.  C.  Coules,  4  *  See  also  note  in  4  Cent.  L.  Jour. 

Cal.  App.  343-1906.  171,  which  is  a  plea  for  interference 

"  Toledo,  etc.,  Ry.  Co.  v.  Pennsyl-      by  injunction  in  cases  of  trade  libel. 
vania  Co.,  54  Fed.  730-1893   (C.  C. 
Ohio);  19  L.  R.  A.  387. 


Libel,  and  Slander  of  Business  Names,  Etc.        417 

to  note  some  of  the  publications  and  utterances  which  have  re- 
cently been  enjoined  in  England:—  trade  letters  imputing  that 
plaintiff's  goods  were  spurious,  it  being  held  unnecessary  to 
show  special  damage  ;5  stating  in  a  paper  called  ' '  Money 
Maker  "  that  plaintiff's  bank  was  in  litigation;6  unauthorized 
use  of  man's  name  where  such  use  injured  his  property  and 
business.7  In  Punch  v.  Boyd8  an  action  was  brought  for 
£10,000  damage  for  libel.  The  plaintiff  had  built  an  expen- 
sive plant  to  make  butter  firkins  by  machinery  instead  of  by 
hand.  The  butter  merchants  of  Limerick  posted  placards 
reading :  ' '  Notice  to  Farmers  ' '  and  stating  that  they  would 
refuse  to  purchase  butter  packed  in  machine-made  firkins  il  as 
we  find  them  to  be  more  injurious  to  keeping  the  quality  of  the 
butter,"  etc.,  and  an  interlocutory  injunction  was  granted 
because  a  verdict  of  a  jury  would  not  afford  adequate  compen- 
sation. The  court  interfered  ' '  to  prevent  injury  to  the  plain- 
tiffs by  the  publications  complained  of  until  the  defendants 
shall  have  established  their  defense."  The  injunction  was 
granted  on  affidavits. 

'Thomas  v.  Williams,  L.  R.  14  Ch.  N.    S.   556-1899;   Hawker  v.   Stour- 

Div.  864-1880.  field   Park   Hotel   Co.,   Wkly.   Notes 

"London     &     Northern     Bank     v.  51-1900. 

Newnes,  16  Times  L.  R.  76-1899.  8  L.  R.  Ir.  16  Q.  B.  Div.  476-1885. 

7  Dockrell  v.     Dougall,    80    L.    T. 

27 


CHAPTER  XV. 

Tbade  Secrets  and  Confidential  Relations. 

Section  208.  Effect  of  publication  of  a  secret. 

209.  Conditional  sale  of  goods  made  by  secret  formulae. 

210.  Injnctions  against  breach  of  contract  by  disclosure  of  secrets. 

211.  Is  a  secret  a  monopoly? 

212.  Disclosure  of  a  secret  in  court. 

213.  Discovery  of  a  secret  by  lawful  means. 

214.  Violation  of  contract  of  employment  by  betrayal  of  secrets. 

215.  Employees  are  bound  by  implied  contract  not  to  disclose  secrets. 

216.  Title  to  secrets  discovered  by  employee  as  a  part  of  his  work. 

217.  Unlawful  secrets. 

218.  Danger  of  injury  to  plaintiff  by  defendant's  disclosures  must 

exist. 

219.  One  who  avails  himself  of  a  secret  fraudulently  disclosed  may 

be  enjoined  and  held  accountable  for  profits. 

220.  Name  of  a  jobber  from  whom  goods  are  bought  may  be  a  trade 

secret. 

221.  Transfer  of  secrets. 

222.  List  of  customers  is  secret  property.     No  one  may  canvass 

them  except  the  owner  of  the  list. 

223.  Letters  may  be  secrets. 

A  secret  is  "  something  known  only  to  one  or  a  few  and 
kept  from  others;  anything  hidden  from  general  knowledge 
or  observation;  something  not  to  be  told."  *  A  secret  may  be 
property,  just  as  land  is  property ;  for  money  and  other  value  is 
often  given  in  return  for  learning  it.  It  somewhat  resembles 
the  property  one  has  in  an  unpublished  manuscript.  The 
right  to  have  exclusive  knowledge  of  foreign  financial  news 
for  fifteen  minutes  after  its  receipt  by  the  Associated  Press 
has  been  held  property.2  So  also  of  the  knowledge  of  secret 
processes  of  manufacture,  and  formulae  for  making  various 
articles  and  the  names  of  the  customers  of  a  business  house. 
In  fact,  any  information  legitimately  obtained  which  is  in  the 
nature  of  a  secret,  a  state  of  knowledge  which  is  valuable 

1  Standard  Diet.  1616.  Telegraph  Co.,  50  How.  Pr.  (N.  Y.) 

'  Kiernan  v.  Manhattan  Quotation      191—1876. 

[41S] 


Trade  Secrets  and  Confidential  Relations.  419 

because  a  few  only  know  the  facts  of  which  it  consists,  is  prop- 
erty; and  the  business  conditions  of  to-day  make  it  impera- 
tive that  he  who  would  wrongfully  publish  this  information 
should  be  enjoined  and  prevented  from  so  doing. 

Peabody  invented  a  process  of  making  gunny  cloth  from 
jute  butts,  and  machinery  to  make  it,  and  employed  Norfolk 
as  machinist.  Norfolk  became  confidentially  possessed  of 
knowledge  of  the  machinery  and  process  and  entered  into  an 
agreement  with  Peabody  not  to  divulge  the  secrets.  Norfolk 
left  Peabody  two  years  later  and  began  plans  to  build  a  rival 
factory  fitted  with  machinery  on  Peabody 's  model.  In  the 
opinion  in  this  case  Judge  Grey  speaks  of  the  character 
of  the  rights  of  the  owner  of  a  secret  thus :  '  *  If  he  invents  or 
discovers  and  keeps  secret  *  *  *  he  has  not  indeed  an 
exclusive  right  to  it  as  against  the  public,  or  against  those  who 
in  good  faith  acquire  knowledge  of  it ;  but  he  has  a  property 
in  it  which  a  court  of  chancery  will  protect  against  one  who,, 
in  violation  of  contract  and  breach  of  confidence  undertakes, 
to  apply  it  to  his  own  use,  or  to  disclose  it  to  third  persons."  3-   j 

A  baker  may  acquire  such  property  in  an  established  route, 
or  list  of  customers  as  will  entitle  him  to  an  injunction  against 
an  employee  to  prevent  his  conspiring  to  leave  said  baker  and 
divert  customers  from  said  route  to  a  rival  baker.4 

"  Independent  of  copyright  or  letters  patent,  an  inventor 
or  author  has,  by  the  common  law,  an  exclusive  property  in  his 
invention  or  composition  until,  by  publication,  it  becomes  the 
property  of  the  general  public."5  The  power  to  protect  such 
property  is  a  part  of  the  original  jurisdiction  of  chancery,  in- 
dependently of  any  rights  which  the  injured  party  may  have 
at  law.  It  has  power  to  prevent  any  act  which  the  court  con- 
siders to  be  a  wrong,  whether  the  wrong  arises  from  viola- 
tion of  a  right  or  from  a  breach  of  confidence.6 

'Peabody    v.    Norfolk,    98    Mass.  Duer  (N.  Y.)  379-1855;  Peabody  \\ 

452-1867.  Norfolk,   98   Mass.   452-1867;    Salo- 

4  Smith  v.  Kernan   (Ohio),  5  Law  mon   v.   Hertz,   40   N.    J.    Eq.    400- 

Bul.  145;  8  Ohio  Dec.  Reprint  32.  1885;  2  Atl.  379. 

'Tabor  v.  Hoffman,  118  N.  Y.  30,  "Pollard  v.  Photographic   Co.,  40 

at  p.  34-1S89;  23  N.  E.  12,  citing  Ch.  Div.  345-18S9.     "Independently 

as  authority  Palmer  v.  Be  Witt,  47  of  any  question  as  to  the  right  at 
N.  Y.  532-1872 ;  Woolsey  v.  Judd,  4  •    law,   the  court  of   chancery  has  al- 


420  Unfair  Business  Competition. 

§  208.  Effect  of  Publication  of  a  Secret. —  An  owner  of  a 
trade  secret  may  do  with  it  as  he  will.  He  may  refuse  utterly 
to  sell  goods  made  from  it,  if  he  wishes.  He  may  fix  prices 
as  he  chooses.  He  may  sell  at  one  price  to  one  person,  at 
another  to  another.  He  is  not  required  to  give  reasons  or  deal 
fairly  with  purchasers,  but  his  control  over  their  goods  ceases 
with  their  sale.7 

In  France  a  penal  statute  exists  which  punishes  one  who 
communicates  a  secret  of  manufacture,  by  fine  and  imprison- 
ment, and  puts  such  a  person  under  surveillance  of  the  police.8 
This  statute  covers  all  secrets  of  manufacture.  If  there  be  a 
publication  of  the  secret,  then  the  owner  or  the  discoverer  or 
the  inventor  has  no  further  right  to  claim  the  courts'  protec- 
tion. Publication  consists  in  imparting  the  information  in 
such  a  way  as  to  indicate  that  he  gives  up  to  the  public  such 
rights  as  were  his  at  common  law,  as  the  originator  or  the  dis- 
coverer of  the  secret  process.  But  a  "  sale  of  an  article 
compounded  by  secret  process  is  not  publication  of  the  formula 
or  device  used  in  its  manufacture,"  9  and  a  person  who  wrong- 
fully discovers  a  secret  may  not  set  up  a  sale  of  the  article, 
made  by  use  of  the  secret,  as  a  publication  of  the  secret,  and 
hence  a  defense  behind  which  he  may  fortify  himself. 

Communicating  secret  information  to  many  persons  in  con- 
fidential relationship  with  the  owner  of  the  secret  under  a 
contract  not  to  make  the  information  generally  public  is  not 
publication.  Even  the  distributing  such  information  generally 
to  a  number  of  customers  paying  therefor  is  not  publication. 

The  Chicago  Board  of  Trade  conducted  an  exchange,  and 
collected  the  quotations  for  transmission  through  the  tele- 
graph companies,  to  persons  approved  by  it  and  contracting 

ways  had  an  original  and  independ-  "  Tabor  v.  Hoffman,  118  N.  Y.  30, 

<ent  jurisdiction  to  prevent  what  that  at  p.  36-1889 ;  23  N.  E.  12,  citing 

court    considered    and    treated    as    a  Hammer  v.  Barnes,  26  How.  Pr.  (N. 

wrong,  whether  arising  from  a  viola-  Y.)    174-1S63 ;   Morison  v.  Moat,  21 

tion   of   an   unquestionable   right   or  L.   J.   N.   S.    (Ch.)    248-1852;  Mori- 

from   a  breach  of   contract   or   con-  son  v.   Moat,  20  L.   J.  N.   S.    (Ch.) 

fidence"  (at  p.  354).  513-1851;  Green  v.  Folgham,  1  Sim. 

7  Dr.   Miles   Medical   Co.   v.   Piatt,  &  St.  398-1823 ;  Yovatt  v.  Winyard, 

142  Fed.  606-1906,  and  cases  cited.  1  Jac.  &  W.  394-1820 ;  Peabody  x. 

*  §  418  Code,  Penal.  Norfolk,  98  Mass.  452-1867. 


Trade  Secrets  and  Confidential  Relations. 


421 


with  it.  Defendant  obtained  and  nsed  these  quotations  with- 
out plaintiff's  authority,  presumably  by  inducing  persons  con- 
tracting with  plaintiff  to  disregard  their  obligations  to  plain- 
tiff. Held,  that  plaintiff  was  entitled  to  an  injunction.  The 
plaintiff's  quotations  were  held  to  be  in  the  nature  of  a  trade 
secret,  which  would  be  protected.  "  The  plaintiff  does  not 
lose  its  rights  by  communicating  the  results  to  persons,  even 
if  many,  in  confidential  relations  to  itself,  under  a  contract  not 
to  make  it  public,  and  strangers  to  the  trust  will  be  restrained 
from  getting  at  the  knowledge  by  inducing  a  breach  of  trust, 
and  using  knowledge  obtained  by  such  a  breach. ' ' 10 

§  209.  Conditional  Sale  of  Goods  Made  by  Secret  Formulae. 
—  Under  certain  circumstances  a  seller  may  impose  conditions 
and  limitations  with  respect  to  price  and  reselling,  on  persons 
who  buy  his  goods.  It  has  been  claimed  that  to  do  that  is  to 
offend  the  rules  of  the  common  law  against  restraint  of  trade 
and  monopoly,  and  the  federal  anti-trust  act.  Such  conditions 
are  imposed  usually  on  goods  made  under  patents,  copyrights, 
or  secret  processes,  and  they  may  be  imposed  lawfully  on 
goods  made  under  patents.11  One  who  violates  conditions 
of  this  sort,  as  to  a  patented  article,  is  an  infringer.  These 
restrictions  are  held  to  be  valid,  because  of  the  monopoly  of 


10  Board  of  Trade,  etc.  v.  Christie 
Grain  &  Stock  Co.,  198  U.  S.  236- 
1904;  49  L.  ed.  1031;  25  Sup.  Ct. 
637.  Followed  in  Hunt  v.  N.  Y. 
Cotton  Exchange,  205  U.  S.  322- 
1907 ;  51  L.  ed.  821 ;  7  Sup.  Ct.  529. 
Kiernan  v.  Manhattan  Quotation 
Telegraph  Co.,  50  How.  Pr.  (N.  Y.) 
194  (Sup.  Ct.  N.  Y.  Spec.  T.  1876). 
Plaintiff  was  entitled  by  contract  to 
the  exclusive  use,  for  fifteen  minutes 
after  it  was  received,  of  all  foreign 
financial  news  transmitted  through 
the  Associated  Press.  Plaintiff  was 
accustomed,  upon  receiving  this 
news,  to  telegraph  it  immediately  to 
his  customers,  who  were  not  re- 
stricted by  any  express  stipulation 
in  using  or  republishing  it.  Defend- 
ant, through  an  agent,  obtained  and 


sent  to  their  customers  the  same 
quotations,  and  their  agent  was 
shown  to  have  obtained  his  informa- 
tion from  plaintiff's  tapes  and  slips, 
in  the  office  of  his  customers.  Ueld% 
that  plaintiff  was  entitled  to  restrain 
defendant  from  publishing  plaintiff's 
foreign  financial  reports,  the  news 
being  plaintiff's  property,  plaintiff's 
right  not  being  lost  by  the  transmis- 
sion to  his  customers,  and  defendant 
being  deemed  to  have  acquired  his 
information  by  inducing  plaintiff's 
customers  to  violate  the  tacit  under- 
standing implied  from  the  nature  of 
their  contract  with  plaintiff. 

11  John  D.  Park  &  Sons  v.  HarU 
man,  153  Fed.  24-7-1907  (C.  C.  A.) 
and  cases  cited. 


422  Unfair  Business  Competition. 

the  owner  of  the  patent,  which  gives  him  the  right  to  reserve 
to  himself  as  much  or  little  of  his  exclusive  right  as  he  pleases. 

There  is  no  statutory  protection  of  one  who  makes  an  article 
by  a  secret  process  or  private  formula.  He  may  have  a  prop- 
erty right  in  it,  but  he  has  no  special  property  right  similar 
to  the  right  of  the  owner  of  a  patent  or  copyright.  His  secret 
is  valuable  only  because  of  its  being  a  secret,  and  only  so  long 
as  he  keeps  it  secret.  The  general  public  is  free  to  find  it  out, 
by  any  fair  and  honest  method.12  Nevertheless  the  owner  may 
protect  himself  by  the  help  of  a  court  of  equity,  against  dis- 
covery by  breach  of  confidential  relations.13 

An  owner  of  a  secret  is  protected  against  a  breach  of  con- 
tract by  which  his  secret  is  betrayed.  Fowle  v.  Park  14  is  a 
leading  case  in  the  United  States  on  this  point,  and  Fuller, 
C.  J.,  held  there,  that  as  the  contracts  involved  were  based  on 
a  valuable  consideration,  and  were  limited  as  to  space  (but  not 
as  to  time),  and  concerned  a  secret  compound,  the  court  would 
enforce  them ;  that  vendors  were  entitled  to  sell  to  the  best  ad- 
vantage, and  to  preclude  themselves  from  competition  with, 
those  to  whom  they  sold,  and  to  prevent  competition  between 
purchasers,  and  that  the  purchasers  were  entitled  to  reason- 
able protection  (id.  p.  97).  See  >§§  187-8  as  to  conditional  sales 
of  goods  made  by  secret  process. 

§  210.  Injunctions  Against  Breach  of  Contract  by  Disclos- 
ure of  Secrets. —  The  court  will  restrain  a  third  person  from 
inducing  a  subscriber  to  break  his  contract  by  supplying  such 
third  person  with  the  information  for  purposes  of  publication. 

<f  It  is  competent  for  a  news  agency  to  collect  information 
from  a  public  source  and  transmit  it  to  subscribers  to  whom 
it  is  new,  upon  the  terms  that  they  shall  not  communicate  it  to 
third  parties;  and  the  court  will  interfere  by  injunction  to 

"Chadwick   v.    Covell,    151    Mass.  D.   Park   &    Sons   v.   Hartman,   153 

190;  23  N.  E.  1068;  6  L.  R.  A.  839;  Fed.  21-1907;  12  L.  R.  A.  N.  S.  135 

21  Am.  St.  Rep.  442 ;  Tabor  v.  Hoff-  note. 

man,  118  N.  Y.  30-1S89;  23  N.  E.  a  Tavis   v.   Knapp,   121   Fed.   34; 

12;  16  Am.  St.  Rep.  740;  Pcabody  Harrison   v.    Glucose   Co.,   116   Fed. 

v.   Norfolk,   98  Mass.   452-1867;   96  304;    5S   L.   R.   A.   915;   Morison  v. 

Am.  Dec.  664;  Vulcan  Detinning  Co.  Moat,  9  Hare  241. 

v.  American  Contracting  Co.,  58  Atl.  "Fowle   v.    Park,   131   U.    S.   88- 

290-1904;  67  N.  J.  Eq.  243;  John  1S89;  33  L.  ed.  67;  9  Sup.  Ct.  658. 


Trade  Secrets  and  Confidential  Relations.  423 

restrain  a  subscriber  from  communicating  such  information  to 
a  third  party  in  breach  of  his  contract,  and  also  to  restrain  a 
third  party  from  inducing  a  subscriber  to  break  his  contract 
by  supplying  him  with  such  information  with  a  view  to  pub- 
lication."15 

The  foundation  of  the  rule  as  to  invalidity  of  contracts  in  re- 
straint of  trade  is  considered  by  Chief  Justice  Fuller  to  be 
the  case  of  Mitchel  v.  Reynolds,16  and  his  comment  on  that  case 
is  instructive  as  to  the  interpretation  of  such  cases  in  the  light 
of  modern  conditions.  He  says,17  "  but  as  it  (Mitchel  v.  Rey- 
nolds) was  made  under  a  condition  of  things  and  a  state  of 
society  different  from  those  which  now  prevail,  the  rule  laid 
down  is  not  regarded  as  inflexible  and  has  been  considerably 
modified.  Public  welfare  is  first  considered ;  and  if  it  be  not  in- 
volved, and  the  restraint  upon  one  party  is  not  greater 
than  protection  to  the  other  requires,  the  contract  may  be 
sustained. ' ' 

Thus  it  is  seen  that  Chief  Justice  Fuller  sustains  these  con- 
tracts, not  on  the  theory  that  they  were  outside  the  common 
law  rule  against  restraint  of  trade,  but  that  they  were  valid 
because  the  court  considered  them  necessary  to  protect  the 
rights  of  the  owner  of  the  secret. 

Justice  Grey  considers  them  lawful,  "  because  the  process 

"Exchange  Telegraph  Co.,  Ltd.  v.  information    that    defendants    could 

Central   News,  Ltd.,   2   Ch.   4S-1897  no  longer  obtain  from  plaintiffs,  and 

(head-note).      Exchange     Telegraph  then  used  such  information  for  the 

Co.,  Ltd.  v.   Gregory  &  Co.,   73  L.  purpose  of  their  business  by  posting 

T.  120-1895;  affirmed  in  1Q.B.  147-  it    on    bulletin    boards    in    various 

1896.     Plaintiff  published  stock  ex-  places.     Held,   that   defendants  had 

change   bulletins,   and   under   an   ex-  no  right  to  appropriate  the  informa- 

clusive   contract   with   the   stock   ex-  tion,  which  was  plaintiffs'  property, 

change  management,  furnished  stock  that  they  were  maliciously  interfer- 

exchange    quotations    to'   subscribers  ing    with    plaintiffs'    business,    and 

under  a  contract  by  which  the  sub-  that  the  interference  was  actionable 

scribers  bound  themselves  not  to  com-  without    proof    of    special    damage, 

municate   information   thus   obtained  Injunction  granted.     (Note  copyright 

to  nonsubscribers.     Defendants  were  infringement  was  also  involved.) 

formerly  subscribers  but  had  ceased  "1  P.  Wms.  181;   1   Smith  Lead, 

to     be    such.       They    induced    sub-  Cas.  Pt.  II  50S. 

scribers,   in   violation    of   their    con-  "  Fowle  v.  Park,  131  U.  S.  88-9- 

tracts  with  plaintiffs,  to  supply  the  1S89;  9  Sup.  Ct.  658. 


424  Unfair  Business  Competition. 

must  be  kept  secret  in  order  to  be  of  any  value,  and  the  public 
has  no  interest  in  the  question  by  whom  it  is  sold."  18 

§  211.  Is  a  Secret  a  Monopoly? —  So  long  as  the  owner  of  a 
secret  keeps  it  a  secret  he  has  a  monopoly.  While  equity  affords 
protection  to  trade  secrets  against  betrayal  by  those  under 
contract,  or  in  confidential  relations  with  the  owners  of  the 
secret,  it  is  doubtful  if  there  is  any  difference  between  con- 
tracts as  to  trade  secrets  and  contracts  as  to  any  other  per- 
sonal property,  so  far  as  restraint  of  trade  is  concerned. 
There  is  such  a  difference  between  contracts  as  to  patents  and 
those  as  to  secrets,  because  of  the  statutory  monopoly  of 
patentees.  But  no  distinction  is  enjoyed  by  contracts  involv- 
ing trade  secrets.  Contracts  forming  a  system  of  selling 
goods,  which  limit  and  restrict  the  rights  of  jobbers  and  re- 
tailers, by  forbidding  them  to  sell  goods  except  to  specified 
persons  or  classes  of  persons,  are  held  illegal.  It  is  considered 
that  there  is  nothing  about  a  secret  process,  which  so  differen- 
tiates it  from  other  personal  property,  as  to  warrant  the 
stifling  of  competition,  which  results  from  these  contracts. 
See  full  discussion  of  question  in  John  D.  Park  &  Son  v.  Hart- 
man.19  There  it  is  contended  that  any  such  restrictions  on  the 
sale  of  goods  must  be  shown  to  be  not  larger  than  necessary 
for  the  protection  of  the  owner  of  the  secret  process  against 
such  unjust  use  of  the  secret  as  will  injure  the  business  and 
rights  in  it,  which  the  owner  retains.  "  A  partial  restraint  of 
competition  may  be  upheld,  when  one  sells  a  business  or  other 
property,  provided  it  is  no  greater  than  necessary  to  enable 
the  vendor  to  realize  the  value  of  his  good-will,  or  to  secure  to 
the  buyer  the  enjoyment  of  his  purchase,  or  to  prevent  the 
use  of  the  property  to  the  prejudice  of  the  seller  "  (id.  p.  44, 
Lurton,  J.). 

There  are  other  cases  of  authority  which  are  opposed  to  this 
doctrine.20 

§  212.  Disclosure  of  a  Secret  in  Court. —  The  fact  that,  if 
the  secret  is  to  be  used,  it  must  be  examined  and  understood  by 

18  Central     Transportation     Co.    v.  30  For  a  further  discussion  of  the 

Pullman  Palace  Car  Co.,  139  U.  S.  right  to  enjoin  such  breach  of  con- 

24-53-1890;  35  L.  ed.  55;  11  Sup.  tract,  see  chapter  on   "Interference 

Ct.  478.  with  Contract." 

19 153  Fed.  24-1907;  12  L.  R.  A. 
N.  S.  135  note. 


Trade  Secrets  and  Confidential  Relations.  425 

public  officials,  will  not  prevent  its  owner  enjoining  him  who 
would  fraudulently  publish  it,  nor  will  the  disclosure  of  the 
secret  to  a  court  in  judicial  proceedings  be  held  a  publication.21 
In  an  application  for  an  injunction  against  disclosure  of  a 
trade  secret,  it  is  not  necessary  to  reveal  to  the  court  the 
secret  or  disclose  confidential  information  relating  to  it  — 
certainly  not  in  the  open  court.  Such  hearing  may  be  held 
in  camera,  and  is  valid  if  so  held.  Such  a  disclosure  is  not  a 
publication  to  the  world  in  any  sense.22  A  manufacturer  seek- 
ing to  protect  trade  secrets  by  injunction  will  not,  ordinarily, 
be  requested  at  the  trial  to  disclose  what  these  secrets  are.23 

Evidence  as  to  a  secret  may  be  taken  in  camera  and  sealed 
where  the  question  is  involved  as  to  whether  or  not  the  plain- 
tiff is  the  owner  of  a  secret.24  It  was  once  held,  that  injunc- 
tion is  not  a  proper  remedy  where  plaintiff  alleges  defendant 
revealed  a  trade  secret,  because  the  information  was  no  longer 
secret  when  revealed  to  a  court,  which  revelation  must  take 
place  before  court  can  decide  ;25  but  to-day  measures  are  taken 
to  protect  such  secrets  when  being  considered  by  courts,  and 
the  secret  is  preserved  so  far  as  is  necessary  to  also  preserve 
the  cause  of  action  upon  it. 

In  A.  L.  Baglin  v.  The  Cusenier  Co.25*  the  court  deemed  it 
was  unable  to  decide  as  to  the  imitation  of  plaintiff's  cordial 
because  it  did  not  know  the  ingredients  of  it,  holding  that  more 
than  opinion  and  speculation  is  necessary  to  show  imitation, 
especially  "  when  the  party  upon  whom  the  burden  rests  has 
it  in  his  power  to  establish  fraud,  if  it  exists,  by  proof  which 
it  will  be  practically  impossible  to  contradict,"  per  Coxe,  J. 

§  213.  Discovery  of  a  Secret  by  Lawful  Means. —  The  right 
to  legally  discover  and  use  a  secret  was  early  recognized. 
Hardwicke,  Ld.  Ch.,  said  in  Gibblett  v.  Read,™  "  So  in  the  case 

"  Peabody    v.    Norfolk,    98    Mass.  u  Taylor     Iron     &     Steel     Co.     v. 

452-1867.   "  Nichols,  69  Atl.  186-1908  (N.  J.  Er. 

w  Stone  v.   Grasselli  Chemical  Co.,  &  App.). 

65  N.  J.  Eq.  756-1903 ;  55  Atl.  736 ;  25  Deming    v.    Chapman,    11    How. 

63  L.  R.  A.  344.  Pr.  (N.  Y.)  382-1854. 

33  Taylor    Iron     &    Steel     Co.    v.  25a  164  Fed.  25-1908  (C.  C.  A.). 

Nichols,  70  N.  J.  Eq.  541-1905 ;  61  u  9  Mod.  459-1743. 
Atl.    946;    Sterling    Varnish    Co.    v. 
Macon,  217  Pa.  St.  7-1907;  66  Atl. 
78. 


426 


Unfair  Business  Competition. 


of  Tipping,  if  anybody  had  thought  of  his  nostrum,  as  he  had 
no  patent,  any  discoverer  might  have  sold  it." 

"When  the  secret  information  becomes  known  to  the  defend- 
ant through  his  own  efforts,  no  action  lies  against  him.  He 
has  a  right  to  discover  for  himself  the  ingredients  of  a  secret 
medical  formula  by  study  of  the  medicine  itself,  if  it  be  sold 
publicly,  or  he  may  discover  the  secret  of  a  method  of  manu- 
facture from  a  study  of  the  manufactured  article.  If  he  ac- 
quires the  hidden  information  honestly,  he  may  use  it  as  he 
will,  assuming  of  course  there  is  no  question  of  patent;  but 
a  discovery  of  a  secret  by  unfair  means,  such  as  bribing  a 
clerk  of  the  owner  of  the  secret,  or  stealing  or  copying  the 
information  from  the  owner  will  not  be  protected.27 

An  illustration  of  a  fair  use  of  a  secret  which  resulted  in  loss 
to  one  rightfully  in  possession  of  it,  is  found  in  Stewart  v. 


27  Tabor  v.  Hoffman,  118  N.  Y.  30- 
6-18S9;  23  N.  E.  12.  But  because 
this  discovery  may  be  possible  by 
fair  means,  it  "will  not  justify  a 
discovery  by  unfairness,  such  as  a 
bribery  of  a  clerk,  who,  in  the  course 
of  his  employment,  had  aided  in 
compounding  the  medicine,  and  had 
thus  become  familiar  with  the  for- 
mula. The  courts  have  frequently 
restrained  persons,  who  have  learned 
a  secret  formula  from  compounding 
medicine  and  beverages  and  the  like 
while  in  the  employment  of  a  pro- 
prietor, from  using  it  themselves  or 
imparting  it  to  others  to  his  injury. 
Watkins  v.  Landon,  52  Minn.  389- 
1893;  54  N.  W.  193;  19  L.  R.  A. 
236.  In  1856  "Ward  owned  a  receipt 
for  u  Ward's  Botanical  Liniment." 
The  same  year  he  sold  to  Sands  the 
formula  and  granted  him  the  right  to 
sell  it  in  Minnesota.  It  came  to  be 
known  as  "  Dr.  Ward's  liniment." 
In  1868  plaintiff  claimed  the  sole 
right  to  sell  u  "Ward's  Liniment  "  in 
Minnesota  and  threatened  Sands  with 


prosecution  if  he  sold  the  liniment 
longer  under  that  name.  Conse- 
quently Sands  changed  the  name  to 
"  T.  H.  Sands'  Celebrated  Liniment." 
The  liniment  was  never  patented. 
Since  1870  the  plaintiff  has  sold  the 
liniment  substantially  the  same  as 
Ward's  under  the  name  "  Dr.  "Ward's 
Vegetable  Anodyne  Liniment."  Sub- 
sequent to  18S5  defendant  manu- 
factured and  sold  a  liniment  similar 
to  Ward's  called  "Dr.  Hoffman's 
Vegetable  Anodyne."  In  18S9  Sands 
sold  to  defendants  the  Ward  for- 
mula. Since  that  time  they  have  sold 
it  under  the  label  "  Dr.  "Ward's  Lini- 
ment, Landon  &  Burchard,"  etc. 
Held,  that  as  the  liniment  had  not 
been  patented,  anyone  lawfully  ac- 
quiring the  knowledge  of  its  prepa- 
ration had  a  right  to  use  it,  and  to 
say  that  it  was  made  in  accordance 
with  Ward's  formula;  that  the  com- 
mon name  of  the  liniment  had  come 
to  be  "  Dr.  Ward's  Liniment."  Con- 
sequently the  plaintiff  could  not  ac- 
quire the  sole  right  to  the  name. 


Tua;;s  Secrets  and  Confidential  Relations.  427 

Hook.28  T.  prior  to  1894  had  sold  a  cure  for  the  opium  and 
morphine  habit,  known  as  the  "Acme  Opium  Cure."  T.  had 
invented  and  was  the  sole  owner  of  the  cure.  The  formula 
for  it  was  a  secret  known  only  to  T.  In  1894  T.  sold  to  each  of 
the  two  plaintiffs  a  one-half  interest  in  the  cure.  In  1897  T. 
sold  the  same  formula  and  receipts  to  the  defendant,  who  began 
to  manufacture  under  the  same  name,  not  by  public  advertis- 
ing, but  by  secret  correspondence  under  T.'s  name.  Until  1902 
this  was  unknown  to  the  plaintiffs,  whose  business  had  greatly 
suffered  by  reason  of  the  defendant's  action.  Held  on  the  au- 
thority of  Chad  wick  v.  Covell,20  that,  as  the  defendant  did  not 
come  into  possession  of  the  formula  in  any  unfair  way  and 
had  not  committed  any  fraud  or  breach  of  trust  of  which  the 
plaintiffs  could  complain,  he  could  not  be  held  liable;  that 
the  plaintiffs  sued  the  wrong  man  and  should  have  brought  an 
action  against  T.,  who  by  violating  his  agreement  brought 
about  the  damage  of  which  the  plaintiffs  complain. 

After  the  death  of  the  owner  of  a  secret  unpatented  process, 
anyone  who  discovers  the  process  by  legitimate  methods  may 
use  it  for  mercantile  purposes  and  call  it  by  the  name  of  the 
original  discoverer.30 

Title  to  a  secret  which  has  been  dishonestly  obtained  is  good 
against  all  the  world,  except  the  person  from  whom  it  has  been 
dishonestly  obtained  and  his  assignees.  It  has  been  held,  how- 
ever, that  where  a  company  was  alleged  to  have  obtained 
knowledge  of  a  trade  secret,  seemingly  without  dishonest  in- 
tention, but  from  persons  who  were  dishonestly  using  the 
knowledge  obtained  from  the  discoverer,  a  person  bound  to 
such  company  by  contract  or  confidence  when  sued  by  the  com- 
pany for  a  breach  of  the  contract  or  confidence,  could  not  set 
up  that  the  company  had  no  right  to  the  secret.31 

§  214.  Violation  of  Contract  of  Employment  by  Betrayal 
of  Secrets. —  Many  of  the  cases  involving  a  violation  of  a 
trade  secret  arise  over  the  betrayal  of  an  employer's  confidence 

S8 118  Ga.  445 ;  45  S.  E.  369 ;  63  "  Vulcan  Detinning  Co.  v.  Ameri- 
L.  R.  A.  255.  can  Can  Co.,  67  N.  J.  Eq.  243-1904; 

29 151  Mass.  190.  58  Atl.  290. 

30  James    v.    James,    13    Eq.    421- 

1872. 


428  Unfair  Business  Competition. 

by  an  employee.  Where  the  contract  of  employment  includes 
a  clause  binding  the  employee  not  to  impart  to  anyone  the 
knowledge  he  gains  through  his  employment  except  by  order 
of  his  employer,  the  law  enforces  that  clause.  It  is  not  against 
public  policy  or  in  restraint  of  trade.  The  object  of  the  court 
in  upholding  it,  is  to  preserve  the  employer's  property  in  the 
secret.  "  Courts  of  equity  will  restrain  a  party  from  making 
a  disclosure  of  secrets  communicated  to  him  in  the  course  of  a 
confidential  employment;  and  it  matters  not  in  such  cases 
whether  the  secrets  be  secrets  of  trade  or  secrets  of  title  or 
any  other  secrets  of  the  party  important  to  bis  interests."32 
To  warrant  the  issuance  of  an  injunction  against  a  former 
employee,  it  must  appear  that  the  defendant  made  use  not 
only  of  some  secret  that  the  plaintiff  shares  with  him,  but  it 
must  also  appear  that  the  defendant's  knowledge  of  it  was 
obtained  by  him  through  and  by  means  of  his  having  been  in 
plaintiff's  employ.  No  action  lies  to  restrain  a  former  agent 
of  a  manufacturer  from  selling  an  article  alleged  to  imitate 
the  manufacturer's,  it  not  appearing  that  the  article  was  pat- 
ented or  that  the  former  agent  availed  himself  of  secret 
information  obtained  while  in  the  manufacturer's  employ.33 
One  of  the  earliest  and  most  important  cases  on  this  point  is 
Morison  v.  Moat,34  decided  in  1851,  where  the  right  of  employ- 
ers to  restrain  employees  from  betraying  secrets  was  upheld. 
Morison  invented  a  medicine,  entered  into  partnership  with 
Moat,  reserving  all  rights,  and  told  Moat  the  secret.  Morison 
reserved  the  secret  against  all  the  world  except  Thomas  Moat, 
and  Moat  was  bound  not  to  reveal  it.  Moat  obtained  a  place 
in  the  concern  for  defendant  Moat,  his  son.  Morison  never 
communicated  the  secret  to  defendant.  His  father  had  no  right 
to  do  so,  and  the  court  decided  that  the  defendant  obtained  the 
secret  of  the  medicine  surreptitiously  and  without  sanction  of 
his  partners.  "  The  defendant  derives  under  that  breach  of 
faith  (his  father's  in  telling  him  the  secret  against  the  terms  of 
his  contract),  and  I  think  he  can  gain  no  title  by  it  "  (p.  263). 

"2  Story  Eq.  Jur.  §  952.  M  Morison   v.   Moat,   9   Hare  241- 

"  Mahler  v.  Sanche,  223  111.  136-      1851. 
1906;  79  N.  E.  9,  reversing  121  HI. 
App.  247. 


Trade  Secrets  and  Confidential  Relations. 


429 


On  appeal  the  case  was  affirmed,35  and  it  was  held  that 
"  there  is  no  doubt  whatever  that  where  a  party  who  has  a 
secret  in  trade,  employs  persons  under  contract,  express  or 
implied,  or  under  duty  express  or  implied,  these  persons  can- 
not gain  knowledge  of  that  secret  and  then  set  it  up  against 
their  employer  "  (at  p.  248).  Where  an  employee  is  given  in- 
creased wages  and  agrees  not  to  disclose  the  secrets  of  the  busi- 
ness he  "  has  no  right  to  use  the  secrets  so  obtained  for  his 
own  private  use  or  reveal  them  to  others."36 

An  injunction  will  lie  against  the  use  of  a  secret  without  any 
proof  that  any  disclosure  has  been  made  by  the  defendant. 
An  apprentice  of  plaintiff  became  his  employee.  Just  before 
leaving  he  compiled  and  took  away  a  table  of  dimensions  of 
the  various  types  of  fire  engines  which  plaintiff  made  and 
which  dimensions  plaintiff  claimed  to  be  trade  secrets.  No 
proof  was  given  of  disclosure.  Defendant  was  a  draughtsman. 
Interim  injunction  granted.37  Disclosure  of  methods  of  busi- 
ness, receipts  for  medicines,  and  all  sorts  of  confidential  infor- 
mation, will  be  protected  by  equity  against  fraudulent  dis- 
closure.38 


36  21  L.  J.  N.  S.  (Ch.)  248. 
"Fralich   v.  Despar,  165  Pa.   St. 

24-6-1894;  30  Atl.  521. 

37  Merryweather  v.  Moore,  2  Ch. 
518-1892. 

88  Tolman  v.  Mulcahy,  119  App. 
Div.  (N.  Y.)  42-1907;  103  N.  Y. 
Supp.  936.  Defendant  bad  been  em- 
ployed by  plaintiff,  a  lender  of 
money,  under  a  contract  that  she 
would  divulge  to  no  outsider  any- 
thing regarding  the  system  or 
methods  of  the  plaintiff's  business, 
and  would  not,  within  two  years 
after  leaving  plaintiff's  employ,  en- 
gage in  the  same  business  as  prin- 
cipal or  employee.  She  left  plain- 
tiff's employ  and  became  an  em- 
ployee of  a  firm  doing  a  similar  busi- 
ness, and  it  was  alleged  that  she  was 
communicating  to  her  new  employers 
confidential  information  acquired  in 


plaintiff's  employ.  Held,  that  while 
under  all  the  circumstances  no  pre- 
liminary injunction  should  issue 
against  her  remaining  in  a  third  per- 
son's employ,  defendant  was  prop- 
erly enjoined  from  communicating  or 
divulging  plaintiff's  forms  or  meth- 
ods and  from  sending  letters  to 
plaintiff's  customers.  Yovatt  v.  Win- 
yard,  1  J.  &  W.  394-1820.  Defend- 
ant, while  in  plaintiff's  employ,  had 
surreptitiously  copied  receipts  for 
veterinary  medicines,  and  after  leav- 
ing his  employ  began  to  sell  the 
medicines,  with  printed  directions  for 
their  use,  which  were  almost  literal 
copies  of  plaintiff's.  Upon  the 
ground  that  there  had  been  a  breach 
of  confidence,  the  court  granted  an 
injunction  restraining  defendant 
from  using  or  communicating  the 
receipts,  and  from  printing  and  pub- 


430  Unfaib  Business  Competition. 

§  215.  Employees  Are  Bound  by  Implied  Contract  Not  to 
Disclose  Secrets. —  In  the  absence  of  such  a  clause  in  the 
contract  of  employment  the  law  will,  when  necessary  for  the 
protection  of  the  property  of  the  employer,  import  into  the 
contract  a  prohibition  against  a  betrayal  of  his  trust  and  con- 
fidence and  against  imparting  any  confidential  information 
to  others.  An  early  case  involving  this  rule  is  referred  to  by 
the  English  Chancery  Court.  "  *  *  *  I  mentioned  during 
the  argument  a  case  which  is  unreported,  so  far  as  I  know,  but 
which  has  some  bearing  on  these  points.  It  was  a  case  of  a 
master  tailor  and  his  foreman  cutter.  The  foreman  cutter, 
whilst  in  the  employ  of  the  master  tailor,  cut  out  the  ordinary 
patterns  for  the  dress  of  his  master's  customers  —  those  brown 
paper  things  which  may  be  seen  in  many  a  tailor's  shop,  but, 
being  about  to  leave  his  master's  service,  and  to  set  up  for  him- 
self an  independent  business,  and  being  desirous  of  attracting 
the  custom  of  his  master's. customers,  he  made,  whilst  in  the 
employ  of  the  master  tailor,  copies  of  those  brown  paper  pat- 
terns; and,  setting  up  for  himself,  he  took  them  away  with 
him,  and  made  use  of  them,  by  informing  those  whom  he  sup- 
posed would  deal  with  him  (his  late  master's  customers)  that 
he  had  their  patterns,  and  he  could  make  their  clothes  with- 

lishing  the  directions  for  their  use.  also  agreed  that  he  would  not  dis- 
The  National  Gum  6:  Mica  Co.  v.  close  any  secrets  that  he  learned 
Braendly,  27  App.  Div.  (N.  Y.)  219;  from  the  plaintiff  while  in  his  em- 
51  N.  Y.  Supp.  93.  Delery  owned  a  ploy.  Held,  the  power  to  restrain 
small  business,  the  assets  of  which  the  violation  of  a  secret  protected  by 
consisted  almost  wholly  in  secret  a  contract  is  well  settled.  The  ven- 
processes  for  making  various  articles.  dee  employed  the  manager  as  long 
Defendant  approached  plaintiff  and  as  he  desired  to  stay  in  its  employ, 
offered  to  sell  him  the  secrets,  and  and  was  willing  to  continue  to  em- 
plaintiff  agreed,  if  the  sale  was  ploy  him,  and  hence  performed  its 
made,  to  employ  the  defendant,  and  part  of  the  contract.  That  the  court 
defendant  agreed  not  to  communi-  had  power  to  punish  defendant  for 
cate  the  processes  to  anybody  else.  violating  an  in j  miction  restraining 
Defendant  remained  in  plaintiff's  him  from  disclosing  the  secret  proc- 
employ  only  a  short  time,  but  he  re-  esses  bought  by  the  plaintiff,  and 
fused  to  disclose  to  the  plaintiff  the  also  the  secrets  which  defendant 
processes,  and  finally  left  the  plain-  had  learned  while  in  plaintiff's 
tiff  and  organized  a  corporation  for  employ, 
carrying  on  the  same  business.     He 


Trade  Secrets  and  Confidential  Relations.  431 

out  putting  them  to  the  trouble  of  attending  to  be  measured 
again.  The  master  tailor  obtained  an  injunction  against  him 
for  using  this,  which,  in  substance,  was  information  obtained 
by  him  exclusively  for  the  benefit  of  the  master  while  in  the 
master's  employment."39 

Plaintiff  sold  typewriter  ribbons.  Defendant  was  in  his  em- 
ploy from  1886  to  1894,  when  he  left  and  organized  the  Roch- 
ester Ribbon  &  Carbon  Co.,  and  began  to  make  goods  by  a 
process  used  by  the  plaintiff.  While  in  plaintiff's  employ  he 
copied  every  formula  he  used.  Held,  defendant  was  in  a  confi- 
dential relation  to  plaintiff  and  in  that  relationship  gained 
knowledge  of  his  processes.  He  knew  of  the  care  exercised  to 
keep  the  secret  and,  in  violation  of  the  confidence  reposed  in 
him,  surreptitiously  made  memoranda  of  the  formulas,  and  was 
now  using  them  and  other  knowledge  obtained  while  in  plain- 
tiff's employ  to  run  a  rival  establishment.  The  law  raises  an 
implied  contract  where  none  exists,  "  that  an  employee  who 
occupies  a  confidential  relation  toward  his  employer  will  not 
divulge  any  trade  secrets  imparted  to  him,  or  discovered  by  him 
in  the  course  of  his  employment,  and  we  do  not  see  why  the 
defendants,  Gallus  &  Bostwick,  are  not  under  just  as  strong 
an  obligation  to  observe  and  keep  secret  the  trust  reposed  in 
them  as  they  would  be  had  they  reduced  the  contract  which  the 
law  implies  to  writing."40 

38  Lamb    v.    Evans,    3    Ch.    4G2-8-  Held,  that  the  evidence  showed  that 

1892.  the  business  and  the  process  were  a 

48  Little   v.    Gallus   et    ah,   4    App.  secret ;  that  the  defendant  knew  that 

Div.  (N.  Y.)  569-71-1S96;  38  N.  Y.  fact;    that   the   employment   was   on 

Supp.  487.     Thum  &  Co.  v.  Tloczyn-  the    agreement    that    the    defendant 

ski,  114  Mich.  149-1897;  38  L.  R.  A.  would  not  communicate   information 

200;  72  N.  W.  140.    Plaintiffs  manu-  received  by  him  to  the  harm  of  his 

factored  fly-paper.     The  process  was  employer;    that    an    express    agree- 

regarded  a  secret.     The  public  were  ment  existed  between  the  parties,  and 

excluded  from  the  premises  where  it  even    though    there   was    no    express 

was    made.      The   employees    at   one  agreement    an    agreement    would    be 

machine  were  not  allowed  to  inspect  implied  from  the  facts  on  which  the 

the  other  machines.     The  business  of  defendant  could  be  restrained.     (Cit- 

the  firm  grew.    The  defendant  was  in  ing    Story    Eq.    Jur.    §§    323,    952.) 

the  employ  of  the  plaintiffs.    He  left  That  it  was  not  against  public  inter- 

their  employ  and  began  to  engage  in  est   to   allow   an    employer   to   make 

the  manufacture  of"  the  same  product,  such  conditions  with  his  employees, 


432  Unfair  Business  Competition. 

Not  all  contracts  of  employment  will  sustain  an  injunction 
of  this  sort.  Actual  knowledge  of  business  secrets  on  the  part 
of  the  employee,  acquired  from  his  employment,  is  essential, 
and  it  must  be  knowledge  of  some  facts  known  only  to  the  em- 
ployer or  those  in  his  confidence  or  under  contract  with  him. 

A  contract  with  an  employee  which  forbids  him  to  divulge, 
during  the  term  of  the  agreement  or  afterward,  "  any  infor- 
mation of  any  nature  now  known  to  him,  or  hereafter  acquired 
by  him  during  the  term  of  his  agreement,  relating  to  the 
process  of  steel  making,"  etc.,  was  held  to  compel  the  em- 
ployee to  either  work  for  this  employer  or  remain  idle.  Such 
a  contract  will  not  be  enforced.41 

Where  a  general  insurance  agent  left  his  employer  and  at- 
tempted to  divert  policy-holders  in  the  company  formerly  em- 
ploying him,  to  his  later  employer,  no  injunction  was  granted, 
as  the  relation  to  the  employer  was  not  confidential  in  the  sense 
that  he  acquired  knowledge  of  any  business  secret.  Persons 
might  have  taken  out  policies  on  account  of  friendship  for  the 
agent.  There  was  no  reason  why  he  should  not  solicit  their 
business  for  new  company  he  represented.42    See  §  59. 

§  216.  Title  to  Secrets  Discovered  by  Employee  as  a  Part 
of  His  Work. —  Often  persons  are  employed  for  the  purpose 
of  devoting  their  time  and  brains  to  the  invention  of  new 
methods  relating  to  the  business  of  their  employer.  He  pays 
them  a  salary  and  defrays  the  expenses  of  the  experiments, 
and  he  is  held  to  be  entitled  to  the  ownership  of  all  inventions 
and  secrets  discovered  by  them  while  in  his  employ.  Such 
persons  will  be  enjoined  from  disclosing  to  others  any  of  the 

but   was  to   the   advantage  of  both  while   in   its   employ.     He  was   en- 
parties  that  such  a  contract  should  be  joined. 

made.    G.  F.  Harvey  Co.  v.  National  41  Taylor    Iron     &     Steel     Co.     v. 

Drug  Co.,  75  App.  Div.  (N.  Y.)  103-  Nichols,  69  Atl.  186-1908   (N.  J.  C. 

1902;   77  N.  Y.   Supp.   674.     L.  J.  E.    &    App.).      See    also    Alger    v. 

Harvey   was  in   employ   of   plaintiff  Thatcher,   19   Pick.   51;   Albright   v. 

as   superintendent   where  he   learned  Teas,  37  N.  J.  Eq.  171. 

secret  of  compounding  certain  medi-  "  Stein  v.  National  Life  Assn.,  105 

cines.    He  left  plaintiff's  employ  and  Ga.  821-1898;  32  S.  E.  615;  46  L. 

entered  that  of   defendant  to  whom  R.   A.  150.     See  also   High  Injunc- 

plaintiff  claimed  he  had  revealed  the  tions,  §  19. 
secret  process  learned  from  plaintiff 


Trade  Secrets  and  Confidential  Relations. 


433 


information  so  acquired,  and  such  an  injunction  will  issue 
also  against  any  who,  by  means  of  information  acquired 
through  such  persons,  make  use  of  such  inventions.  This  relief 
is  allowed  on  an  implied  contract  which  the  law  finds  in  the 
relation  of  persons  so  employed,  that  one  will  not  betray  any 
secret  of  his  employer,  and  further,  because  such  betrayal  of 
a  secret  would  be  a  breach  of  trust  such  as  a  court  of  equity 
will  condemn.43 


43  Westervelt  v.  National  Paper  & 
Supply  Co.,  154  Ind.  673-1900;  57 
N.  E.  552.  One  Taggart  was  em- 
ployed by  National  Paper  Company. 
He  was  at  work  on  an  incomplete 
tube  machine,  and  it  was  understood 
that  all  improvements  made  by  Tag- 
gart to  said  machine  should  belong 
to  National  Paper  Company,  and 
that  Taggart  should  finish  machine. 
Later  Taggart  was  employed  by 
Westervelt  to  build  machines  like 
those  he  had  built  for  National  Paper 
Company,  and  at  this  time  Wester- 
velt knew  nature  of  contract  of  Tag- 
gart with  National  Paper  Company 
and  that  machine  was  trade  secret. 
"  Said  machine  was  a  secret  and,  un- 
der the  facts  alleged,  even  if  no 
agreement  was  made,  one  would  be 
implied  that  he  (Taggart)  was  not 
to  disclose  the  secret  of  the  construc- 
tion of  the  machine,  or  impart  any 
information  by  which  anyone  could 
construct  such  a  machine.  He  oc- 
cupied a  confidential  relation  to  the 
National  Paper  Company  and  in  such 
case  the  law  raised  an  implied  con- 
tract between  him  and  them  that  the 
employee  will  not  disclose  any  trade 
secret  imparted  to  him  or  discovered 
by  him  in  the  course  of  his  employ- 
ment. A  disclosure  of  such  secrets 
thus  acquired  is  not  only  a  breach 
of  contract  on  his  part  but  is  a 
breach   of   trust    which    a   court   of 

28 


equity  will  prevent"  (p.  679).  Held, 
injunction  would  lie  against  the  em- 
ployee to  prevent  his  manufacturing 
the  machine  for  others.  It  would  lio 
against  third  parties  reproducing  the 
machine  from  plans  given  by  the 
employee.  That  the  fact  that  there 
were  in  existence  machines  which 
would  fold  paper,  which  machines 
were  trade  secrets  not  known  to  the 
National  Paper  Company,  as  show- 
ing that  the  machine  was  not  a 
secret,  did  not  make  the  petition  de- 
murrable or  raise  a  presumption  that 
it  was  the  same  kind  of  a  machine. 
Neth  v.  Ohmer,  30  App.  D.  C.  478- 
1908.  One  who  conveys  to  em- 
ployees information  and  orders  that 
they  make  a  machine,  is  entitled 
to  their  skill  and  ingenuity,  and  to 
any  patent  or  secret  process  of  value 
which  they  discover.  Eastman  Kodak 
Co.  v.  Reichenbach  et  al.,  20  N.  Y. 
Supp.  110-1892.  Plaintiff  manu- 
factured Kodak  cameras,  etc.  De- 
fendants were  in  plaintiff's  employ 
under  an  agreement  to  give  plain- 
tiff all  benefit  of  any  inventions 
they  made.  Action  was  to  restrain 
defendant  from  revealing  secrets 
learned  in  course  of  their  employ- 
ment. Injunction  granted.  Stone 
v.  Grasselli  Chemical  Co.,  65  N. 
J.  Eq.  756-1903;  55  Atl.  736; 
63  L.  R.  A.  344.  One  Goss  was 
an  employee  of  plaintiffs  from  1892 


434  Unfair  Business  Competition. 

"  Every  clerk  employed  in  a  merchant's  counting  house  is 
under  an  implied  contract  that  he  will  not  make  public  that 
which  he  learns  in  the  execution  of  his  duty  as  clerk  *  *  * 
and  if  he  avails  himself  surreptitiously  of  the  information 
which  he  could  not  have  had  except  from  a  person  guilty  of  a 
breach  of  contract  in  communicating  it,  I  think  he  could  not 
be  permitted  to  avail  himself  of  that  breach  of  contract."44 
Where  one  who  was  employed  as  an  inventor  discovered  in 
the  course  of  his  employment  a  valuable  process  and  at- 
tempted to  drive  a  more  favorable  bargain  as  to  his  wages  as 
a  consideration  for  revealing  the  discovery,  the  court  gave 
to  the  employers  an  order  compelling  disclosure  to  them  and 
forbidding  disclosure  to  anyone  else,  and  the  injunction  issued, 
although  the  employee  had  been  dismissed.45 

There  are  limits  to  the  information  which  an  employee 
may  not  divulge.  He  usually  may  disclose  where  his  em- 
ployer buys  material,  what  his  prices  are,  and  his  customers,46 
after  his  employment  is  ended. 

The  term  employee  as  here  used  includes  not  only  workmen 
and  artisans,  but  all  persons  who  act  for  another  in  a  capacity 
which  demands  of  the  employed  good  faith  and  confidence. 
For  an  employee  to  quit  the  employment  and  then  use  in  the 
service  of  a  rival  information  of  a  confidential  nature  gained 
in  the  prior  employment  is  contrary  to  good  faith  and  fair 
dealing,  and  all  such  actions  are  not  only  a  breach  of  trust, 
but  are,  if  such  a  presumption  be  necessary,  in  violation  of 
implied  conditions  against  such  acts,  which  conditions  the  law 
will  import  into  any  contract  of  employment.  As  seen  above, 
the  relation  of  an  insurance  agent  has  been  held  not  confiden- 
tial within  the  meaning  of  this  rule,  but  an  injunction  has  been 

to  1901.     During  this  time  plaintiff  "  Tipping  v.  Clarke,  2  Hare  393. 

had  improved  a  secret  process  by  a  Cited  in  Prince  Albert  v.  Strange,  1 

secret    method    of    mixing    the    in-  Hall  &  T.  1-1849  (at  p.  24). 

gredients.      Goss    knew    this    secret  ^  Silver  Spring  Co.  v.  Woolworth, 

method.     He  left  plaintiffs'  employ,  16  R.  I.  729-1886;  19  Atl.  528. 

entered  that  of  defendants,  and  dis-  "Salomon  v.  Hertz,  40  N.  J.  Eq. 

closed  the  method.    Held,  he  was  un-  400-1885;  2  Atl.  379. 
der  an  express  contract  not  to  dis- 
close the  secret.     Injunction  granted 
against  Goss  and  defendant. 


Trade  Secrets  and  Confidential  Relations.  435 

issued  in  England  against  an  agent  of  an  advertising  house 
who,  on  leaving  it,  used  information  gained  there  in  his  new 
position.  In  this  case,  when  the  agreement  of  employment 
terminated,  Evans  went  to  a  rival  house  and  used  in  its 
employ  materials,  headings,  etc.,  which  he  had  obtained  while 
with  plaintiff.  Such  use  violated  the  good  faith  of  the  employ- 
ment, and  good  faith  underlies  the  whole  of  an  agent's  obli- 
gations to  his  principal;  an  agent  has  no  right  to  employ, 
as  against  his  principal,  material  obtained  only  for  his  prin- 
cipal and  in  course  of  his  agency.  "  The  defendant,  Evans, 
was  exclusively  employed  by  the  plaintiff  to  collect  the  adver- 
tisements in  certain  districts,  and  in  regard  to  the  material 
things,  such  as  blocks  and  the  like,  it  was  the  duty  of  these 
defendants  to  furnish  the  plaintiff  with  them  for  the  purpose 
of  his  work  "  (id.  p.  468).  "As  well  as  I  could  make  out  from 
the  evidence,  the  defendant,  Evans,  has  retained  some  of 
these  blocks  and  other  materials,  and  also  the  notes  which 
they  have  made  during  the  term  of  their  exclusive  employ- 
ment. In  my  opinion,  as  between  the  plaintiff  and  the  de- 
fendants, these  things  could  only  be  used  wrongfully  as 
against  the  plaintiff."47  An  agreement  not  to  communicate 
a  trade  secret  applies  to  agents  of  the  one  contracting.  On  no 
other  basis  could  vendee  safely  buy.  While  such  a  contract 
of  purchase  is  a  personal  covenant,  it  relates  to  the  actions  of 
others,  as  well  as  to  the  acts  of  the  vendor  himself.48 

§  217.  Unlawful  Secrets. —  The  rule  which  prohibits 
former  employees  from  making  disclosure  of  their  employers* 
secrets  and  of  information  acquired  in  course  of  their  em- 
ployment, does  not  apply  to  facts  acquired  by  them  which 
show  fraudulent  conduct  on  the  part  of  one  or  more  of  the 
employers  to  the  injury  of  persons  dealing  with  them.  The 
rules  applicable  to  trade  secrets  do  not  apply  to  such  a  case. 
There  can  be  no  lawful  confidence  in  an  iniquitous  and  un- 
lawful information.49 

47  Lamb  v.  Evans,  3  Ch.  462-1892 ;  "  Gartside  v.  Outram,  3  Jur.  N.  S. 
affirmed  in  1  Ch.  218-1893;  62  L.  J.  39-1856.  Defendant  was  a  former 
Ch.  404.  employee  of  plaintiffs,  a  firm  of  brok- 

48  Tode  v.  Gross,  127  N.  Y.  480-  ers,  and  during  his  employment  had 
1891;  28  N.  E.  469;-13  L.  R.  A.  652  acquired  information  showing  fraud- 
note,  ulent  conduct  on  the  part  of  the  firm 


436  Unfair  Business  Competition. 

§  218.  Danger  of  Injury  to  Plaintiff  by  Defendant's  Dis- 
closures Must  Exist. —  In  order  to  obtain  an  injunction  it 
should  appear  tliat  the  plaintiff  is  in  a  position  where  he  is  ex- 
posed to  danger  of  loss  by  defendant's  acts  or  threatened 
acts.50 

§  219.  One  Who  Avails  Himself  of  a  Secret  Fraudulently 
Disclosed  May  be  Enjoined  and  Held  Accountable  for  Profits. 
—  A  secret  need  not  be  one  relating  to  methods  of  manufac- 
ture or  process  to  receive  the  protection  of  the  court,  but  may 
be  some  financial  or  commercial  information,  or  the  fact  that 
some  customer  is  about  to  place  an  order.  If  an  employee 
or  agent  leaves  his  employer  or  is  discharged  knowing  such 
information,  and  he  imparts  it  to  a  rival  to  the  damage  of  his 
former  employer,  the  second  employer  will  be  enjoined  from 
using  the  information,  and  may  be  compelled  to  account  for 
any  profits  made  from  use  of  this  information. 

One  Hayes,  an  employee  of  complainant's  predecessor, 
briefly  termed  the  "  New  Haven  Company,"  had  nearly 
completed  negotiations  with  a  Boston  company  for  placing  an 
order  with  the  New  Haven  Company,  when  the  latter  turned 
over  all  its  business  to  complainant,  which  did  not  take  Hayes 
into  its  employ.  Hayes  then  availing  himself  of  information 
obtained  and  relations  established  with  the  customer  while 
in  the  employ  of  the  New  Haven  Company,  succeeded  in 
directing  the  contract  to  the  defendant  company.     Held,  that 

to    the    injury    of    persons    dealing  come  to  the  knowledge  of  the  person 

with  them.     Upon  his  evidence  one  confidentially   employed.     There  can 

person  so  injured  had  recovered  sub-  be    no    confidence    in    an    iniquitous 

stantial     damages    before     an     arbi-  secret. 

trator.      The   firm   then    sued   to   re-  30  Shonk  Tin  Printing  Co.  v.  Shonk, 

strain  him  from  making  further  dis-  138  111.  34-1891;  27  N.  E.  529.    The 

closures,  on  the  ground  that  his  in-  appellant  had  gone  out  of  business 

formation    had   been    acquired   while  and  appellee  was  its  successor.    Held, 

he  occupied  a  confidential  relation  to  that  as  it  did  not  appear  that  at  the 

them.     Held,  that  the  protection  to  time  the  bill  was  filed  the  appellant 

which    one   is   ordinarily   entitled   as  was  in  a  position  where  it  could  have 

against  any  person  whom  he  has  em-  been  injured  by  the  acts  of  appellee 

ployed  in  a  confidential  way  in  his  complained  of,  and  this  is  an  indis- 

affairs  is  not  to  be  extended  to  eases  pensable   element   of   this   action,  no 

where    fraudulent    transactions    have  injunction  would  issue. 


Trade  Secrets  and  Confidential  Relations.  437 

this  company  was  liable  to  account  to  complainant  for  the 
profits  made  on  this  contract.51 

§  220.  Name  of  a  Jobber  from  Whom  Goods  Are  Bought 
May  be  a  Trade  Secret.—  The  court,  on  application  of  a  manu- 
facturer, will  not  compel  a  retailer  to  give  information  as  to 
who  was  the  jobber  who  sold  certain  goods  made  by  this  manu- 
facturer to  the  retailer.     This  fact  is  held  to  be  a  trade  secret. 

A  dry  goods  store  was  asked  who  sold  the  goods  of  plaintiff 
to  them,  and  on  their  declining  to  answer  court  upheld  them, 
saying  that  fact  was  a  trade  secret  not  essential  to  mainte- 
nance of  the  plaintiff's  suit.  "  When  a  manufacturer  parts 
with  his  goods  and  they  go  upon  the  market,  any  third  person 
has  the  right  to  purchase  and  sell  them  as  he  pleases  without 
the  consent  of  the  manufacturer,  under  the  guise  of  protecting 
his  trade-mark  or  the  suppression  of  unfair  competition,  by 
permitting  him  in  such  litigation  to  discover  the  source 
from  which  an  objectionable  merchant  to  him  obtained  his. 
supply. ' ' 52 

In  connection  with  this  ruling,  that  of  the  New  Jersey  Chan- 
cery Court  should  be  noticed,  when,  in  Salomon  v.  Hertz,53  it 
was  held  that  employees  should  not  be  restrained  after  their 
employment  was  ended  from  disclosing  where  plaintiff  pur- 
chased his  materials  or  to  whom  he  sold  his  goods  or  the  prices 
at  which  he  bought  and  sold. 

A  plea  by  the  defendant  that  he  uses  no  secret  in  his  busi- 
ness or  has  possession  of  no  secret,  such  as  the  plaintiff* 
alleges  he  has,  will  not  be  sufficient  to  prevent  the  issuing  of 
the  injunction. 

§  221.  Transfer  of  Secrets. —  As  early  as  1823  trade  secrets 
were  objects  of  transfer  by  sale,  assignments  and  bequests,  and 
the  right  of  the  true  owner  of  a  secret  to  hold  to  account  one 
who  wrongfully  obtains  possession  of  it  was  upheld.54 

61  International  Register  Co.  v.  Re-  398-1823.  The  owner  of  a  secret 
cording  Fare  Register  Co.,  151  Fed.  formula  for  making  an  ointment,  as- 
199-1907  (C.  C.  A.  2d  Cir.).  signed  it,  on  her  marriage,  to  trus- 

62  Gorham  v.  Emery,  etc.,  Co.,  92  tees,  in  trust  for  her  and  her  hus- 
Fed.  779.  band  for  their  lives,  then  to  be  sold 

B40   N.   J.   Eq.   400-1885;   2   Atl.      for  the  benefit  of  their  children.   The 

379.  -  mother    destroyed    the    formula,    but 

14  Green  v.  Folgham,  1  Sim.  &  St.      verbally  communicated  its  contents  to 


438  Unfair  Business  Competition. 

A  secret  may  be  transferred  by  gift.  In  Covell  v.  Chad- 
wick,66  an  administratrix  transferred  a  formula  and  trade- 
marks by  a  gift.  The  donee  of  the  administratrix  thereupon 
made  the  medicine.  The  plaintiff,  a  grantee  of  an  adminis- 
trator de  bonis  non,  who  followed  the  administratrix,  at- 
tempted in  this  action  to  prevent  the  donee  from  using  the 
formula.    Held,  the  donee  had  good  title. 

Where  one  has  sold  for  a  valuable  consideration  the  ex- 
clusive property  in  a   secret  medicine,  he  has  no   right  to 
reveal  the  secret  to  another,  and  an  injunction  will  issue 
against  the  use  of  such  a  secret  by  one  to  whom  it  has  been 
revealed  either  by  the  vendor  himself  or  by  the  member  of  the 
family  or  other  person  who  is  in  possession  of  it  through 
confidential  relations  with  the  vendor.56     Whether  nominated 
in  the  agreement  of  the  transfer  or  not,  the  vendor  of  a  secret 
will  not  be  allowed  to  impart  the  secret  to  a  third  person  after 
the  transfer.     The  law  holds  the  right  conveyed  to  be  exclu- 
.-  sive  even  of  the  vendor  himself,  and  an  injunction  will  issue 
.against  the  vendor,  or  any  one  of  his  family  or  associates  who 
learn  the  secret  through  their  relations  with  Mm,  forbidding 
them  to  disclose  it. 

The  assignment  of  a  trade  secret  carries  the  right  to  pro- 
tect it,  by  preventing  disclosure  or  unauthorized  use  on  the 
part  of  those  who  have  held  confidential  relations  with  the 
assignor,  though  they  may  never  have  had  any  connection 
with  the  assignee.  This  because  title  to  a  trade  secret,  though 
dishonestly  obtained,  is  good  against  everyone  except  the  per- 
son from  whom  the  secret  had  been  so  obtained  and  his 
assigns.57 

§  222.  List  of  Customers  is  Secret  Property  —  No  One  May 
'Canvass  Them  Except  the  Owner  of  the  List. —  The  question 
-whether  a  person  who  had  sold  the  good-will  of  his  business 
was  entitled  afterward  to  canvass  the  customers  of  that  busi- 

her  eldest  son,  for  the  benefit  of  the  M  153  Mass.  263-1891 ;  26  N.  E.  856. 

brothers     and     sisters.       Upon     suit  M  C.  F.  Simmons  Medicine  Co.  v. 

brought  against  him  by  some  of  the  Simmons,  81   Fed.   163    (C.   C.  Ark. 

latter,   he   was   declared   to  hold  the  1897). 

secret  upon  the  trust   of  the  settle-  "  Vulcan  Detinning  Co.  v.  Ameri- 

ment,    and   was   directed   to   account  can  Can  Co.,  67  N.  J.  Eq.  243-1904; 

for    the    profits    since    his    mother's  58  Atl.  290. 
death. 


Trade  Secrets  and  Confidential  Relations.  439 

ness  came  first  before  the  courts  for  decision  in  the  case 
of  Labouchere  v.  Dawson,58,  and  Lord  Romilly,  M.  R.,  an- 
swered in  the  negative.  He  was  of  opinion  that  the  principles 
of  equity  must  prevail  and  that  persons  are  not  at  liberty  to 
depreciate  the  thing  which  they  have  sold.  He  considered 
that  the  defendant  was  not  entitled,  personally  or  by  letter, 
or  by  his  agent  or  traveler,  to  go  to  anyone  who  was  a  cus- 
tomer of  the  firm  and  to  solicit  him  not  to  continue  business 
with  the  old  firm,  but  to  transfer  it  to  him ;  that  this  was  not 
a  fair  and  reasonable  thing  to  do  after  he  had  sold  the  good- 
will. Accordingly  an  injunction  was  granted  "  to  restrain  the 
defendant,  his  partners,  servants,  or  agents  from  applying  to 
any  person  who  was  a  customer  of  the  firm  prior  to  the  date 
of  the  sale,  privately,  by  letter,  personally,  or  by  a  traveler, 
asking  such  customers  to  continue  to  deal  with  the  defendant 
or  not  to  deal  with  the  plaintiffs  "  (id.  p.  327). 

Before  1876  Trego  and  wife  were  in  business  in  Condon. 
In  1876  Trego  took  Hunt  into  partnership,  agreeing  with  Hunt 
that  the  good-will  should  remain  Trego's  property.  Trego 
died,  business  was  continued  by  his  widow,  under  contract  that 
she  should  be  sole  owner  of  good-will.  In  1894  Hunt  employed 
a  clerk  out  of  hours  to  make  a  copy  of  the  concern's  custom- 
ers.   Injunction  granted.59 

A  manager  of  a  game  farm  surreptitiously  copied  from  his 
master's  order  book  a  list  of  names  and  addresses  of  the 
customers,  with  the  intention  of  using  it  for  the  purpose  of 
soliciting  orders  from  them  after  he  had  left  the  plaintiff's 
employ,  and  set  up  a  similar  business  of  his  own.  He  then 
left  the  plaintiff's  employ  and  sent  out  circulars  to  the  cus- 
tomers in  the  list,  soliciting  their  trade  for  himself.  Held, 
that  in  such  a  contract  of  service  there  is  an  implied  stipula- 
tion that  the  servant  will  act  with  good  faith  toward  his 
master,  and  that  defendant's  conduct  was  a  breach  of  that 
obligation.  The  court  granted  an  injunction  against  the  use  of 
information  derived  from  the  list,  awarded  damages  and  di- 
rected that  the  list  be  delivered  to  plaintiff  to  be  destroyed.60 

M 13  Eq.  322-1872.  ,0  Bobb    v.    Green,    2    Q.    B.    315- 

69  Trego  v.  HuntL  1896  App.  Cas.  7.      1895.    And  see  2  Q.  B.  L 


410  Unfair  Business  Competition. 

It  is  seen  from  the  foregoing  that  under  English  procedure, 
where  an  ex-employee  is  found  to  have  copied  and  used  a  list 
of  customers  belonging  to  his  former  employer,  the  court  has 
power  to  enjoin  the  use  of  it,  award  damages,  and  direct  that 
the  list  be  delivered  to  the  plaintiff  to  be  destroyed.  See  §§  59, 
215. 

§  223.  Letters  May  be  Secrets. —  After  dissolution  of  a 
partnership,  equity  will  restrain  one  partner  from  publish- 
ing letters  of  another  partner  concerning  the  business  of  the 
firm,  unless  the  purpose  of  justice,  civil  or  criminal,  require 
such  publication.61     See  §  62. 

61  Roberts  v.  McKee,  29  Ga.  161-1859. 


CHAPTER  XVI. 

Remedies. 

Section  224.  Jurisdiction  of  courts  in  unfair  competition  cases. 

225.  Parties. 

226.  Injunctions  before  any  act  committed  —  Bills  in  nature  of  quia 

timet. 

227.  Preliminary  injunctions. 

228.  Temporary  relief,  pending  trial. 

229.  Important  and  basic  facts  will  not  be  decided  on  preliminary 

hearing. 

230.  Injunctions  against  libel  and  slander  of  goods  and  names. 

231.  Injunction  directing  use  of  explanatory  phrases. 

232.  Final  relief  —  Scope  of  permanent  injunctions. 

233.  The  court   does  not  pass  upon  measures  adopted  by  the  de- 

fendant to  correct  his  unfair  acts. 

234.  Decree  correcting  a  confusing  use  of  names  and  signs. 

235.  Injunctions  against  use  of  colors,   size,  form,  etc. 

236.  Injunctions  against  use  of  family  names,  scope  of. 

237.  Injunction  against  the  use  of  the  name  of  an  ex-partner  or 

former  member  of  a  corporation,  or  owner  of  a  patent. 

238.  Damages  and  accounting  for  profits. 

239.  Election  of  remedy  by  plaintiff. 

240.  Damage  to  reputation  of  product  to  be  reckoned  as  well  as  Iosg 

of  profits. 

241.  Exemplary  damages. 

242.  Deduction  of  defendant's  expenses  from  profits. 

243.  Destruction  and  delivery  up  of  offending  articles. 

244.  Accounting  refused  where  injunction  is  denied. 

245.  Contempt  of  court  by  failure  to  obey  injunction. 

§  224.  Jurisdiction  of  Courts  in  Unfair  Competition  Cases. 

t — The  general  rules  as  to  jurisdiction  apply  to  unfair  compe- 
tition cases,  and  hardly  require  discussion  in  this  book.  Fed- 
eral jurisdiction  in  cases  of  this  sort  attaches  in  two  classes  of 
cases.  First,  those  arising  under  the  United  States  trade-mark 
statutes.  Such  cases  belong  to  the  law  of  technical  trade- 
mark, and  therefore  do  not  fall  within  the  scope  of  this  book.1 

*A.  Leschen  &  Sons  Rope  Co.  v.  L.  ed.  710;  26  Sup.  Ct.  425.  An 
Broderick  &  Bascom  Rope  Co.,  134  action  for  infringement  of  trade- 
Fed.  571-1904;  67  C.  C.  A.  418;  mark.  Held,  that  the  jurisdiction  of 
affirmed  in  201  U."  S.  166-1905;  50      the  federal  court  depends  solely  on 

[441] 


442  Unfair  Business  Competition. 

So  far  as  jurisdiction  of  the  Federal  courts  is  concerned,  un- 
fair competition  cases  do  not  differ  from  other  cases.  The 
general  rules  in  that  regard  apply.  And  secondly,  where,  re- 
gardless of  the  question  of  trade-mark,  there  is  a  diversity  of 
citizenship  and  amount  claimed  amounts  to  $2,000  or  more. 
Jurisdiction  of  the  parties  will  not  be  sufficient,  if  the  acts 
complained  of  were  done  wholly  without  the  United  States. 
In  such  a  case  our  courts  would  lack  jurisdiction  of  the  subject- 
matter. 

An  action  based  upon  unfair  competition  sounds  in  tort,  and 
not  in  contract.2  The  gist  of  the  action  is  the  wrong  done  the 
plaintiff.  There  is  no  contractual  relation  between  the  plain- 
tiff and  defendant  in  these  actions;  accordingly,  if  the  acts 
complained  of  are  all  committed  in  a  foreign  jurisdiction,  the 
court  will  not  take  jurisdiction  even  though  both  parties  are 
before  it. 

In  Vacuum  Oil  Co.  v.  Eagle  Oil  Co.,2*  the  defendants  shipped 
oil  abroad  in  barrels  unmarked,  except  for  identification,  and 
then  branding  them  abroad  with  the  plaintiffs'  marks.  A 
question  of  the  jurisdiction  of  the  United  States  Circuit  Court 
over  the  action  arose,  and  Cross,  J.,  held  the  scheme  having 
been  conceived  here  and  partially  carried  out  here,  the  court 
had  jurisdiction.  He  says  (p.  874)  :  "  It  cannot  be  that  the 
arm  of  the  court  is  too  short  to  reach  and  stop  this  fraudulent 
conduct,  or  so  much  of  it,  at  least,  as  is  carried  on  in  this 
country."  And  again  (p.  875),  the  fact  that  some  of  the 
fraudulent  acts  were  committed  outside  the  jurisdiction  of 

whether   plaintiff's   registered   trade-  this  reason  jurisdiction  is  confined  to 

mark  is  valid,  and  if  not  so,  jurisdic-  the  trade-mark  as  registered.    If  that 

tion  of  the  case   as   one  of  unfair  mark  is  invalid,   the  federal   courts 

competition      cannot      be      assumed.  are  without  authority  to  grant  any 

"  Much  is  said  in  the  brief  of  appel-  relief  on  the  ground  of  unfair  trade 

lant  to  the  effect  that  the  defendant  competition."     Citing  Elgin  National 

has   been   guilty  of  unfair  competi-  Watch    Co.    v.    Illinois    Watch    Case 

tion   by  palming  off   on   the   public  Co.,  179  U.  S.  665-1900;  21  Sup.  Ct. 

ropes    of   its   manufacture   as   com-  270 ;  44  L.  ed.  365. 

plainant's  rope.     This  is  a  subject,  *  Vacuum  Oil  Co.  v.  Eagle  Oil  Co., 

however,     over    which    the     federal  122  Fed.  105-1903  (C.  C.  N.  J.), 

courts   have   no    jurisdiction.      Com-  2a  154   Fed.   867;    affirmed   in   162 

plainant    and    defendant    are    both  Fed.  671-1908. 
citizens  of  the  same  state,  and  for 


Remedies.  443 

this  court  and  outside  of  the  United  States  will  not  avail  the 
defendants. 

§  225.  Parties.—  The  fact  that  the  plaintiffs  have  distinct, 
different,  and  unequal  interests  in  the  subject-matter  of  an 
equitable  proceeding  will  not  abate  the  proceeding,  for  equity 
provides  for  such  a  contingency  and  will,  in  a  decree,  adjust 
and  define  the  rights  of  each.  This  applies  to  unfair  com- 
petition cases.3 

It  was  held  in  Armstrong  v.  Savannah  Soap  Works,*  that  the 
directors  of  a  corporation  and,  it  seems,  its  agents  or  em- 
ployees also,  may  properly  be  included  as  parties  defendant 
in  a  suit  for  trade-mark  infringement  or  unfair  competition. 
But  directors  will  not  be  joined  with  the  corporation  as  de- 
fendants in  the  absence  of  an  allegation  as  to  them  except 
that  they  are  directors.5  Where  a  suit  for  unfair  competition 
was  brought  against  individuals  doing  business  under  a  cor- 
porate name,  the  corporation,  even  if  it  existed  and  if  the 
individuals  were  its  officers  or  agents,  was  not  a  necessary 
party.5* 

In  Saxlehner  v.  Eisner  &  M.  Co.6  executive  officers  of  a  cor- 
poration were  held  liable  for  infringements  of  the  corpora- 
tion's rights,  where  they  have  personally  directed  the  infringe- 
ment, especially  where  they  control  the  corporation;  and  the 
fact  that  an  injunction  has  been  obtained  against  a  corpora- 
tion, its  officers,  and  agents,  does  not  preclude  complainant 
from  obtaining  a  separate  injunction  against  the  officers  as 
individuals. 

Printers  who  made  labels  or  manufacturers  of  wrappers  or 
bottles,  or  articles  which  are  used  unfairly,  may  be  made 
parties  defendant  jointly  with  the  trader  who  actually  does  the 
passing  off. 

In  equity  all  those  having  interests  involved  in  the  suit  may 
join  therein  for  the  protection  of  such  rights  in  the  subject- 
matter  as  they  may  have,  and  the  same  acts  may  be  proceeded 

8  Jewish     Colonization     Assn.     v.  "  Elgin  Nat.  Watch  Co.  v.  Love- 
Solomon,  125  Fed.  994-1903   (C.  C.  land,  132  Fed.  41-1904  (C.  C.  la,). 
N.  Y.).  "147  Fed.  189-1906  (C.  C.  A.  2d 

'53  Fed.  124-1S92   (C.  C.  Ga.).  Cir.). 

6  Cropper  v.  Cropper,  23  R.  P.  C. 
388-1906. 


444  Unfair  Business  Competition. 

against  in  one  action,  although  the  rights  may  be  diverse, —  as, 
for  example,  the  infringement  of  separate  patents  by  one 
machine.6* 

So,  in  Northcutt  v.  Turney,6b  it  was  held  that  owners  of  dif- 
ferent springs,  entitled  to  use  a  common  trade-mark  or  trade 
name,  might  join  in  a   suit  to   enjoin  its  use  by  another. 

In  Morse  v.  Hall,Gc  the  administrator  of  a  deceased  partner 
might  join  with  members  of  a  firm  authorized  to  use  the  de- 
ceased partner's  name.  Those  controlling  a  corporation  are 
properly  joined  as  defendants  in  an  action  against  it,6d  and 
the  organizers  and  officers  who  own  most  of  the  stock.06 
In  general,  agents  and  servants  may  be  joined  as  defend- 
ants, although,  it  would  seem,  those  who  are  mere  work- 
men in  the  employ  of  a  manufacturer 6f  should  not  be  so  joined. 
An  exclusive  licensee  should  be  joined  as  a  complainant  with 
the  proprietor.68 

Stockholders  of  a  corporation  sued  for  unfair  competition 
are  not  proper  parties  defendant.611  But  in  William  G.  Rogers 
Co.  v.  International  Silver  Co.6i  it  was  held  that  an  individual 
engaged  in  business  in  which  he  is  chargeable  with  unfair  com- 
petition and  who  transfers  the  business  to  a  corporation  of 
which  he  becomes  a  stockholder,  may  be  joined  with  the  corpo- 
ration as  a  defendant.  Sellers  of  the  offending  goods  may  be 
joined  as  defendants  with  the  manufacturers.63 

It  is  not  indispensable  to  join  as  a  defendant  the  corporation 
in  whose  name  certain  individual  defendants  charged  with  un- 
fair competition  were  carrying  on  a  business.6"  Nor  is  it 
necessary  to  join  as  a  defendant  the  actual  proprietor  of  a 
business  who  was  unknown  to  the  public  and  who  acted  through 
an  agent.61 

**  Jewish  Colonization  Assn.  v.  Sol-  (preliminary  injunction  denied  where 

omon  &   Germansky,  125  Fed.  994.  such  licensee  was  not  joined). 

"b  101  Ky.  314.  6h  Hall's  Safe  Co.  v.  Herring-Hall- 

'c  109  Mass.  409.  Marvin  Safe  Co.,  146  Fed.  37. 

ed  California  Fig  Syrup  Co.  v.  Im-  6i  118  Fed.  133. 

proved  Fig  Syrup  Co.,  51  Fed.  296.  *3  Matsell  v.  Flanagan,  2  Abb.  Pr. 

oe  Burrow   v.  Marceau,   124   A.   D.  (N.   S.)   459. 

(N.  Y.)  665.  6k  Elgin    Watch    Co.    v.    Loveland, 

^Estes    v.    Worthington,    30    Fed.  132  Fed.  411. 

465.  "'  Bradley    v.    Morton,    33     Conn. 

6g  Wallach  v.  Wigmore,  87  Fed.  469  157. 


Remedies.  445 

§  226.  Injunctions  Before  any  Act  Committed  —  Bills  in 
the  Nature  of  Quia  Timet.— Injunctions  will  be  granted  to 
prevent  threatened  acts  of  unfair  competition.  It  is  not  neces- 
sary to  wait  until  a  name  that  tends  to  mislead  the  public  and 
is  likely  to  be  used  for  that  purpose,  is  actually  used  in  the  busi- 
ness of  the  defendant.  Equity  favors  him  who  in  such  a  case 
acts  promptly  and  before  rights  or  equities  (such  as  those  of 
innocent  stockholders)  have  attached.7  Where  an  answer  avers 
that  the  defendant  intends  to  do  unfair  acts  in  the  future,  sub- 
stantially the  same  as  those  complained  of,  an  injunction  is 
warranted.  This  is  held  in  Enterprise  Co.  v.  Lander,®  where  the 
goods  which  the  defendant  had  made  in  imitation  of  those  of  the 
plaintiff  had  been  offered  for  sale,  but  none  sold.  An  injunc- 
tion will  be  granted  against  persons  about  to  form  a  corpora- 
tion to  engage  in  the  same  business  as  plaintiff,  under  a  name 
so  similar  to  plaintiff's  as  to  be  likely  to  cause  confusion  and 
so  injure  plaintiff's  business,  without  waiting  for  business  to 
be  actually  begun  under  the  corporate  name.9  No  evidence  of 
actual  deceit  is  necessary  to  procure  such  relief.  Probability 
of  deception  may  be  enough,  but  it  must  be  imminent.  No  sub- 
stantial pecuniary  loss  need  be  proved.  The  mere  fact  of  very 
close  resemblance  of  labels  has  been  held  enough  to  warrant  an 
injunction.  The  Court  of  Appeals  in  New  York  has  said:10 
that  "  no  evidence  was  given  or  offered  (in  this  case)  to 
show  that  any  person  had  actually  been  deceived  by  the  imita- 
tion of  the  plaintiff's  trade-mark,  and  we  think  that  none  was 
necessary  for  the  maintenance  of  the  action.  It  is  the  liability 
to  deception  which  the  remedy  may  be  invoked  to  prevent.  It 
is  sufficient  if  injury  to  the  plaintiff's  business  is  threatened 
or  imminent  to  authorize  the  court  to  intervene  to  prevent  its 
occurrence.    The  owner  is  not  required  to  wait  until  the  wrong- 

'  Edison    Storage    Battery    Co.    v.  Palmer  v.  Beading  Biscuit  Co.,  Ltd., 

Edison  Automobile  Co.  of  Washing-  10   R.   P.   C.   277-1893.      See  §   128 

ton,  D.  C,  67  N.  J.  Eq.  44-1904 ;  56  note  23. 

Atl.  G61.  10  Taendsticksfabriks     Akticbolagat 

6 131  Fed.  240-1904.  Vulcan   v.    Myers,    139   N.    Y.    364- 

'Hendriks   v.    Montagu,   50   L.    J.  67-68-1893;  35  N.  E.  603. 

(Ch.)    N.   S.   456-1881;    Huntley   & 


446  Unfair  Business  Competition. 

ful  use  of  his  trade-mark  lias  been  continued  for  such  a  length 
of  time  as  to  cause  some  substantial  pecuniary  loss."11 

Preliminary  injunction  will  be  granted  against  use  of  a 
trade  name  before  any  use  is  made  of  it  at  all,  where  it  appears 
there  are  other  names  which  are  legitimate  and  proper  for  the 
purpose,  and  the  defendant  is  threatening  to  take  away  an- 
other's business  by  use  of  the  particular  name  in  question.12 

Two  corporations,  the  "  Elgin  National  Watch  Company  " 
and  the  "  Elgin  Watch  Case  Company  "  were  held  entitled  to 
restrain  defendants  from  completing  the  incorporation  of  a 
rival  company,  to  be  located  at  Elgin,  under  the  name  of  the 
"  Elgin  National  Watch  Case  Company,"  on  the  ground  that 
confusion  would  be  sure  to  result.12* 

The  "  Universal  Life  Assurance  Society,"  which  had  long 
been  doing  a  large  life  insurance  business  with  head  offices  in 
London,  was  held  entitled  to  an  injunction  against  the  regis- 
tration of  the  name  "  Universe  Life  Assurance  Association, 
Limited;"  the  proposed  new  company  had  been  advertised  as 
about  to  engage  in  the  business  of  life  insurance  in  Great 
Britain  and  elsewhere,  and  had  a  temporary  office  in  London, 
but  had  not  yet  commenced  business.13 

Again,  although  infringement  has  been  discontinued  before 
the  bringing  of  the  suit,  complainant  may  have  an  injunction 
where  the  acts  or  declarations  of  defendants  indicate  that  they 
still  claim  the  right  to  do  the  acts  which  the  complainant  al- 
leges to  constitute  the  infringement.14 

§  227.  Preliminary  Injunctions. —  In  general,  a  preliminary 
injunction  will  not  be  granted  where  the  evidence  is  conflicting 
and  doubtful.  Evidence  of  unfair  conduct  must  be  reasonably 
clear.15    But  even  though  a  preliminary  injunction  is  refused, 

"See   also   Manufacturing    Co.    v.  147    Fed.    189-1906    (C.    C.    A.    2d 

Trainer,  101   U.   S.  51-1879;  25  L.  Cir.),   affirming   140   Fed.    938-1905 

ed.  993.  (C.  C.  S.  D.  N.  Y.). 

"Huntley    &    Palmer    v.    Beading  "  Cantrell    &    Cochrane   v.    Witte- 

Biscuit  Co.,  Ltd.,  10  R,  P.  C.  277-  mann,  109  Fed.  82-1901    (C.   C.   S. 

1893.  D.  N.  Y.) ;  8.  Howes  Co.  v.  Howes 

""  Elgin  Nat.  Watch  Co.  v.  Eppen-  Grain    Cleaner    Co.,    19    App.    Div. 

stein,  1  111.  Circ.  Ct.  602-1892.  (N.  Y.)   625-1897;  46  N.  Y.  Supp. 

"Hendriks  v.   Montagu,   50   L.   J.  165;  Benjamin  Moore  &  Co.  v.  An- 

(Ch.)  N.  S.  456-1881.  "  well,  158  Fed.  1908  (C.  C.  N.  Y.). 

14  Saxlehner  v.   Eisner    &   M.    Co., 


Remedies. 


447 


protection  in  some  other  form,  pending  a  final  hearing,  is  some- 
times afforded  the  complainant,  as  by  requiring  defendant  to 
keep  an  account  of  sales.  In  Goodyear  Rubber  Co.  v.  Day,™ 
the  claim  was  that  the  name  "  Goodyear  "  was  entitled  to  be 
protected  as  a  trade-mark  or  trade  name,  although  the  patent 
had  expired ;  and  that  it  had  not  become  common  property  as 
merely  descriptive.  The  court  was  inclined  to  think  that  there 
was  no  infringement,  and  refused  a  preliminary  injunction, 
but  directed  an  account  of  sales  to  be  kept  by  defendant.17 

The  publisher  of  "  The  Pictorial  Almanack  "  sought  to 
enjoin  the  publisher  of  "  Old  Moore's  Family  Pictorial  Al- 
manack," the  cover  of  which  resembled  in  some  points  that  of 
the  first  almanac,  but  in  other  points  differed  conspicuously. 
The  court  refused  an  injunction,  but  directed  an  account  of 
sales  to  be  kept,  Chancellor  Cottenham  saying  that  unless  the 
legal  right  is  very  clear  in  a  case  of  this  kind,  no  preliminary 
injunction  should  be  granted.18 


"22  Fed.  44-1884  (C.  C.  E.  D. 
Mo.). 

"  Stirling  Silk  Mfg.  Co.  v.  Sterling 
Silk  Co.,  59  N.  J.  Eq.  394-1900;  46 
Atl.  199.  A  preliminary  injunction 
was  denied,  on  condition,  however, 
that  defendants  should  keep  an  ac- 
count of  profits  pending  suit. 

19  Spottiswoode  v.  Clarke,  2  Phil. 
154—1846.  Van  Camp  Packing  Co. 
v.  Cruikshanks  Bros.  Co.,  90  Fed. 
814-1898  (C.  C.  A.  3d  Cir.).  Pre- 
liminary injunction  held  to  have  been 
properly  denied,  where  the  evidence 
did  not  show  with  certainty  that 
there  was  such  similarity  in  the  dress 
of  goods  as  to  mislead  the  ordinary 
purchaser,  there  being  no  proof  that 
anyone  had  actually  been  misled. 
N.  T.  Asbestos  Mfg.  Co.  v.  Ambler 
Asb.  Air-Cell  Cov'g  Co.,  99  Fed. 
85.  Not  granted  on  ex  parte  affi- 
davits unless  clear  case  made  out, 
where  it  would  result  in  serious  dam- 
age to  defendant.    Baker  v.  Sanders, 


97  Fed.  948.  Court  are  inclined  to 
grant  a  preliminary  injunction 
against  the  use  of  the  labels,  where  a 
decree  has  been  entered  by  another 
court  in  a  suit  by  the  same  com- 
plainant against  a  defendant,  en- 
joining the  use  of  the  same  labels. 
E.  T.  Fairbank  &  Co.  v.  Des 
Moines  Scale  &  Mfg.  Co.,  96 
Fed.  972.  Refused  where  complain- 
ant had  for  many  years  known  of 
defendant's  alleged  infringement, 
where  answer  fully  meets  the  case 
made  by  the  bill,  and  where  defend- 
ant's insolvency  is  not  shown.  Cen- 
taur Co.  v.  Marshall,  97  Fed  785; 
38  C.  C.  A.  413.  Refused,  where 
asked  to  enjoin  use  of  wrappers  al- 
ready abandoned  by  defendants,  or 
of  advertising  matter  which  they 
agree  at  the  hearing  not  to  use  pend- 
ing the  suit.  Clear  case  must  be 
made  out,  both  as  to  right  and  to 
injury.  Postal  Tel.  Cable  Co.  v. 
Netter   102    Fed.    691;    N.    Y.    Asb. 


448  Unfair  Business  Competition. 

§  228.  Temporary  Relief,  Pending  Trial.—  It  frequently 
happens  that  an  application  will  show  apparent  grounds  for  a 
preliminary  injunction,  provided  the  facts  alleged  are  true, 
but  it  is  not  possible  for  the  court  to  be  certain  of  the  truth  of 
the  allegations  of  these  facts.  In  such  cases  preliminary  re- 
lief of  a  temporary  sort  may  be  granted  until  the  facts  are 
passed  upon  at  a  final  hearing. 

In  Ruslimore  v.  Saxon19  unfair  competition  in  imitating  a 
lamp  was  alleged.  Decision  upon  most  of  the  questions  in- 
volved —  as  to  details  of  construction  and  as  to  certain  words 
used  —  was  postponed  till  final  hearing;  but  defendant  was  re- 
quired, by  the  preliminary  injunction,  to  enlarge  his  name- 
plate  so  as  to  make  his  distinctive  name  more  conspicuous. 

' i  Upon  filing  a  bond  for  $2,000,  conditioned  upon  final  suc- 
cess in  the  suit  and  which  would  seem  to  be  amply  sufficient 
to  cover  any  additional  expense  to  which  defendant  may  be 
put,  complainant  may  take  an  injunction  pendente  lite  re- 
straining the  defendant  Keller  from  selling  the  candies  of 
Allegretti  &  Co.  in  packages  bearing  the  name  "Allegretti  ': 
unless  such  name  be  accompanied  with  the  statement, 
'  No  connection  with  the  original  Allegretti  of  Chicago,' 
and  be  further  restrained  from  using  said  name  in  signs  or 
advertisements  unaccompanied  with  a  like  statement."  19a 

§  229.  Important  and  Basic  Facts  Will  not  be  Decided  on 
Preliminary  Hearing. —  In  the  Southern  District  of  New  York 
it  has  been  said  to  be  the  practice  of  the  court  to  delay  issuing 
injunctions  in  trade-mark  cases  until  on  final  hearing  the  valid- 

Mfg.  Co.  v.  Ambler,  etc.,  Co.,  102  plainant  had  known  of  conduct  of 
Fed.  890 ;  Pfeiffer  v.  Wilde,  107  Fed.  defendant  for  a  year  and  a  half. 
456;  Cantrell  &  Cochrane  v.  Witte-  C.  O.  Burns  Co.  v.  W.  P.  Burns  Co., 
mann,  109  Fed.  82  (conflict  of  evi-  118  Fed.  944.  Int.  Silver  Co.  v. 
dence  as  to  priority  of  form  of  Simeon  L.  &  George  H.  Rogers  Co., 
label) ;  Diamond  Match  Safe  Co.  110  Fed.  955.  Part  of  the  relief 
v.  Safe  Harbor  Metal  Co.,  109  sought  may  be  afforded  by  prelim- 
Fed.  154;  see  Schenker  v.  Auer-  inary  injunction,  while  another  part 
bach,  89  App.  Div.  (N.  Y.)  612;  is  withheld  until  hearing  and  final 
National   Starch   Co.  v.   Koster,  146  decree. 

Fed.  259.     Not  granted  on   conflict-  "C.  C.  A.  2d  Cir.  Nov.  1908. 

ing  evidence  —  especially  where  com-  1Ba  Allegretti  v.  Keller,  85  Fed.  643. 


Remedies.  449 

ity  of  the  mark  was  tested.20  Whether  the  court  would 
apply  this  rule  when,  in  a  case  of  unfair  competition,  the  affi- 
davits on  application  for  preliminary  injunction  show  that  a 
representation  had  been  made  by  the  defendant  that  he  was 
the  plaintiff,  or  his  goods  were  the  plaintiff's  goods,  may  be 
doubted. 

A  broad  decision  as  to  identity  or  quality  as  between  two 
brands  of  goods  will  not  be  decided  on  interim  application. 
The  "  Chartreuse  "  case  well  illustrates  this  point.21  The 
monks  of  the  Grand  Chartreuse  in  France  had  long  sold  a 
liqueur,  claimed  to  be  made  by  a  secret  process,  and  well  known 
as  "  Chartreuse,"—  the  name  being  registered  as  a  trade-mark 
in  the  United  States.  About  1901  the  order  was  judicially 
dissolved,  its  members  expelled  from  France,  and  a  receiver 
appointed,  who,  under  authority  of  the  court,  continued  the 
trade-marks  formerly  used  by  the  monks,  and  put  up  the  goods 
in  the  same  manner  and  with  the  same  labels  as  they  had  done. 
Defendant  was  the  receiver's  agent  in  the  United  States.  The 
monks  removed  to  Spain,  and  there  engaged  in  the  manufac- 
ture of  what  they  claimed  to  be  the  only  genuine  "  Char- 
treuse," which  they  sold  under  a  new  label  and  trade-mark. 
A  preliminary  injunction  restraining  defendant  from  using  in 
this  country  the  bottles,  labels,  name,  and  trade-mark  formerly 
used  by  the  monks,  based  on  affidavits  largely  made  on  infor- 
mation and  belief,  and  which  did  not  determine  the  question 
whether  the  product  is  the  same  originally  sold  under  such 
trade-mark,  was  too  broad  in  its  terms,  and  was  modified  by 
allowing  sales  by  defendant,  provided  an  additional  label  was 
attached  to  each  package  reading  as  follows:  "  This  liqueur 
is  made  at  the  Grande  Chartreuse,  in  France,  under  the  direc- 
tion of  M.  Lecouturier,  appointed  liquidator  of  the  property 
of  the  congregation  of  Carthusian  monks  after  its  dissolution 
and  expulsion  from  France  "  (p.  499). 

A  preliminary  injunction  may  require,  as  a  condition  of  its 
issuance,  that  a  stipulation  as  to  future  conduct  be  entered  into 
by  the  plaintiff  with  the  defendant.     "Where  the  defendant 

20  Carmel    Wine    Co.    v.    Palestine  21  Baglin  v.  Cusenier  Co.,  141  Fed. 

Hebrew    Wine    Co.,   161    Fed.    654-      497-1905   (C.  C.  A.  2d  Cir.). 
1908. 

29 


450  Unfair  Business  Competition. 

manufactured  what  might  properly  be  designated  as  "  Clark 
Spool  Cotton,"  and  both  parties  advertised  their  own  goods 
as  the  only  genuine  article  as  described,  the  plaintiffs  were 
held  not  entitled  to  enjoin  defendant  from  continuing  such 
advertisements,  unless  plaintiffs  would  stipulate  to  discon- 
tinue their  own  advertisement  of  the  same  nature.22 

In  the  ordinary  case,  a  preliminary  injunction  will  prohibit 
the  specific  imitation  complained  of  and  also  any  other  mis- 
leading imitation,  sometimes  leaving  open  the  question  as  to 
just  what  is  misleading,  after  holding  the  one  in  use  by  the  de- 
fendant is  actually  causing  deception. 

Lacombe,  J.,  has  granted  a  preliminary  injunction  against 
use  of  packages,  samples  being  annexed  to  the  order,  and 
against  the  use  of  "  any  other  packages  which  by  the  colloca- 
tion of  the  bottle,  carton,  wrappers,  labels,  colors,  and  type  so 
similar  to  the  small  packages  of  the  complainant  as  to  be  cal- 
culated to  mislead  purchasers,"  and  thus  leaving  it  to  the 
parties  themselves  to  decide  as  to  what  packages,  bottles,  and 
the  like  would  or  would  not  be  similar.23 

§  230.  Injunctions  Against  Libel  and  Slander  of  Goods  and 
Names. —  In  cases  involving  alleged  libel  or  slander  of  goods 
or  names,  a  preliminary  injunction  will  not  usually  be  granted. 
In  England  it  is  granted  now  under  the  statutory  power  of 
the  court.  It  is  refused  here  because  an  equity  judge  will  re- 
fuse to  decide  the  question  of  libel  or  no  Hbel  on  affidavits, — 
usually  will  refuse  to  do  so  even  on  final  hearing.24  See  chap- 
ter on  Libel  and  Slander. 

§  231.  Injunction  Directing  Use  of  Explanatory  Phrases. — 
A  preliminary  injunction  may  Be  granted  directing  that  any 
use  of  the  name  claimed  by  the  plaintiff  shall  be  accompanied 
by  a  statement  that  the  defendant  has  no  connection  with  the 
plaintiff,  this  being  ordered  because  of  the  affirmative  duty 
which  rests  on  the  defendant  to  differentiate  the  name  he  uses 
as  a  trade  name  from  other  names  which  are  in  use  when  he 
adopts  his  own  trade  name.25 

22  Clark  v.  Clark,  25  Barb.  (N.  Y.)  21  See  chapter  on  Libel  and 
76-1857.  Slander. 

23  Hansen  v.  Siegel-Cooper  Co.,  106  2!  Allegretti  Choc.  Cream  Co.  v. 
Fed.  690-1900   (C.  C.  S.  D.  N.  Y.).  Keller,  85  Fed.  643-1898   (C.  C.  S. 


Kemedies.  451 

§  232.  Final  Relief  —  Scope  of  Permanent  Injunctions. — 

As  to  forms  of  final  decrees,  see  Cohen  v.  Neigh,25*  enjoining 
use  of  name  "  Keystone  Maid  Cigars;"  Cash  v.  Cash,  §  236, 
infra,  as  to  injunction  against  use  of  name  "  Cash;"  form 
given  in  Meyer  v.  Dr.  Bull  &  Co.25b  The  form  in  Faber 
v.  Faber250  was  in  part  this:  "  The  complainant  is  entitled 
to  a  decree  enjoining  and  restraining  the  defendant  from  using 
the  name  "  Faber  "  alone,  as  applied  to  pencils  or  rubber 
stationer's  goods,  and  from  using  the  name  "  Faber  Pencil 
Company,"  or  "  E.  Faber  Pencil  Company,"  and  from  mak- 
ing, selling,  or  causing  to  be  made  or  sold,  or  advertising  or 
causing  to  be  advertised,  any  lead  pencils,  erasive  rubber,  or 
rubber  bands,  bearing  thereon,  or  on  the  labels,  wrappers, 
boxes,  or  other  coverings  affixed  thereto,  or  in  which  the  same 
are  contained,  either  stamp  lettering  or  other  marks  contain- 
ing the  name  "  Faber,"  or  "  Faber  Pencil  Co.,"  or  "  E. 
Faber  Pencil  Co.,"  or  any  like  or  similar  designation  in  which 
the  name  "  Faber  "  is  used,  without  the  prefix  "  Eberhard," 
or  "  John  E.,"  or  "  J.  Eberhard,"  but  the  defendant  may  use 
the  word  "  Faber  "  with  either  of  said  prefixes,  as  he  may 
elect." 

Further  as  to  form  of  final  decree,  see  Cincinnati  U.  S.  Co.  v. 
Cincinnati  Shoe  Co.25d 

For  form  of  a  decree  against  the  use  of  a  name  of  a  semi- 
geographical  character  which  is  held  to  have  acquired  a 
secondary  meaning,  see  Cohen  v.  Nagle.25* 

As  to  form  of  prayer  for  final  decree,  see  Vulcan  Detinning 

D.   N.  Y.).     Complainant  manufac-  gretti "  unless  accompanied  with  the 

tured   confectionery   in    Chicago,    its  statement    "  no    connection    with   the 

products   being  known   also  in  New  original  'Allegretti '  of  Chicago/'  and 

York.    Defendant  was  the  New  York  from  advertising  in  that  name  with- 

agent  of  Allegretti  &  Co.,  competing  out  a  similar  statement, 

manufacturers     in     Chicago.       The  ""190  Mass.  4-12-13-1906. 

court  considered  that  the  last-named  aM>58  Fed.  884. 

firm  had  willfully  created  confusion  25c124  Fed.  615. 

as  to  the  identity  of  its  own  products  S6d  7   Ohio   N.   P.   135 ;   Enterprise 

and    those    of   plaintiff   respectively.  Co.   v.  Landers,  131   Fed.   240,   also 

Held,  that   defendant   should  be  re-  Walter  Baker   &    Co.   v.   Baker,   87 

strained,  pendente  lite,  from  selling  Fed.  211. 

the    goods    of    Allegretti    &    Co.    in  2Be  190  Mass.  4-12-13-1893 ;  76  N* 

packages    bearing    the    name    "Alle-  E.  276. 


452  Unfair  Business  Competition. 

Co.  v.  American  Can  Co.25t  See  also  §  68,  as  to  duty  to  use 
explanatory  phrases  and  words  in  connection  with  names. 

§  233.  The  Court  Does  not  Pass  Upon  the  Measures  Adopted 
by  the  Defendant  to  Correct  His  Unfair  Acts. —  A  final  in- 
junction should  prohibit  the  specific  infringement  or  act  of 
unfair  competition  complained  of,  and  also  all  similar  infringe- 
ments or  acts.  But  it  is  not  the  province  of  the  court,  upon 
the  settlement  of  the  degree,  to  pass  in  advance  upon  a  modi- 
fied form  of  name,  marks  or  dress  proposed  to  be  adopted  by 
-defendant  to  correct  the  abuses  alleged  in  the  plaintiff's  bill, 
and  to  determine  whether  or  not  the  corrected  form  is  fair  to 
the  plaintiff  and  lawful.  If  the  court  did  this  it  would  be  aid- 
ing the  defendant, —  showing  him  how  —  to  come  as  nearly  as 
possible  to  the  plaintiff's  mark  and  still  keep  within  the  law. 
The  choosing  of  a  new  mark,  or  name,  or  label  must  rest  with 
:the  defendant,  not  with  the  court.  His  duty  in  doing  that  is 
to  keep  as  far  from  imitation  as  possible.  He  must  make  his 
choice  unaided  by  the  court.  If  he  has  acted  unfairly,  he  is 
.  still  answerable  to  the  plaintiff. 

The  Circuit  Court  of  Appeals  for  the  Seventh  Circuit  has 
said26  that  a  court  should  not  in  advance  approve  a  new 
form  of  label  proposed  to  be  used,  especially  where  there  was 
deliberate  infringement  in  the  use  of  the  old  label;  that  in 
such  cases  it  ought  not  to  say  how  near  the  infringer  may 
lawfully  approximate  the  label  of  the  complainant,  but  should 
cast  the  burden  upon  the  guilty  party  of  deciding  for  himself 
how  near  he  may  with  safety  drive  to  the  edge  of  the  precipice, 
and  whether  it  be  not  better  for  him  to  keep  as  far  from  it  as 
possible27  (p.  813).  The  same  court  has  also  said:28  "  But 
the  court  cannot  say  what  shall,  so  much  as  what  shall  not, 
he  done ;  the  limit  of  which  would  seem  to  be  that,  as  already 
indicated,  they  shall  not  use  the  word  Hooton  *  *  * 
except  as  they  clearly  and  unmistakably  state    *    *    *    that  it 

"' 69  Atl.  1103-1908  (X.  J.  Eq.).  cal  Co.,  112  Fed.  1000-1901   (C.  C. 

"  Chas.  E.  Hires   Co.   v.   Consum-  A.  7th  Cir.). 

<ers'  Co.,  100  Fed.  809-1900.  a  Van  Houten  v.  Hooton  Chocolate 

"Mitchell   v.    Williams,   106   Fed.  Co.,  130   Fed.    600-5-1904     (C.    C. 

168-1901  (C.  C.  A.  7th  Cir.);  Ster-  N.  J.). 
ling  Remedy  Co.  v.  Spermine  Medi- 


Remedies.  453 

is  not  the  Van  Houton  Cocoa  made  by  complainants  Van 
Houten&Zoon." 

A  court  should  consider  all  the  defendant's  acts  together 
in  forming  its  opinion  of  his  purposes  and  their  results  to 
the  plaintiff,  and  their  relation  to  his  rights.  "  The  court 
should  not  be  nice  in  limiting  the  scope  of  the  relief  granted, 
because  some  of  the  imitations,  if  practiced  singly  and  with- 
out fraudulent  intent,  might  not  constitute  unfair  competition.29 

§  234.  Decree  Correcting  a  Confusing  Use  of  Names  and 
Signs. —  It  is  not  necessary  that  two  dealers  whose  goods  or 
places  of  business  are  likely  to  be  confused  with  each  other 
should  state  in  their  advertising  and  signs  the  proprietorship 
of  each  store  —  it  is  enough  if  they  so  designate  their  own 
as  to  show  to  the  public  that  it  is  a  different  place  from  that 
of  the  rival,  and  an  injunction  correcting  such  an  unfair  use 
of  a  sign  should  direct  such  use  of  the  signs  or  names  as  will 
indicate  accurately  the  character  of  their  use. 

Where  defendant  built  a  store  next  door  to  plaintiff's  store, 
and  failed  to  distinguish  his  store  so  that  customers  were  in- 
duced by  his  signs  to  go  into  defendant's  store  when  they  were 
seeking  that  of  plaintiff,  a  decree  ordering  defendant  to  "  place 
signs  both  inside  and  outside  his  building  showing  to  the 
world  the  proprietorship  thereof  "  was  "  too  strict  in  that  it 
requires  the  proprietorship  of  the  store  to  be  shown.  In  this 
particular  we  think  the  decree  should  be  modified  so  as  to  re- 
quire that  the  defendant  in  the  conduct  of  his  business  shall 
distinguish  his  place  of  business  from  that  in  which  the  plain- 
tiff is  carrying  on  his  business,  in  some  mode  or  form  that 
shall  be  a  sufficient  indication  to  the  public  that  it  is  a  different 
place  of  business  from  that  of  the  plaintiff. ' ' 30  Here  again  the 
order  should  not  provide  what  the  new  indicia  should  be,  but 
merely  direct  that  they  be  of  such  a  character  as  not  to  confuse 
and  mislead. 

§  235.  Injunctions  Against  Use  of  Color,  Size,  Form,  Etc. — 
"Where  an  injunction  if  couched  in  general  terms  might  appear 
to  forbid  the  exercise  of  some  universal  right,  such  as  the  use 

**  Sterling    Remedy    Co.    v.    Sper-  "°  Weinstock,     Lubin     &     Co.     v. 

mine  Medical  Co., .112  Fed.  1000-  Marks,  109  Cal.  529-43-1895;  30  L. 
1901   (C.  C.  A.  7th  Cir.).  R.  A.  182;  42  Pac.  142. 


45-4  Unfair  Business  Competition. 

of  colors,  form,  size,  or  shape,  the  order  may  specifically 
state  that  it  does  not  forbid  the  making  and  selling  of  pack- 
ages or  goods  of  the  same  size,  shape,  form,  color,  etc.,  as 
plaintiff's  package  or  goods,  provided,  they  are  so  made  as 
not  to  cause  deceit  of  purchasers.  The  Circuit  Court  of  Ap- 
peals, Second  Circuit  has  met  the  plea  that  no  monopoly  can 
be  given  of  color,  thus:31  "  Injunction  should  issue  against 
putting  up  and  selling,  or  offering  for  sale,  '  The  particular 
form  of  package  which  has  been  referred  to  in  the  bill,  and  put 
in  evidence  as  "  Defendant's  Second  Package,"  '  or  any  other 
form  of  package  which  shall,  by  reason  of  the  collocation  of 
size,  shape,  colors,  lettering,  spacing,  and  ornamentation, 
present  a  general  appearance  as  closely  resembling  the  '  Com- 
plainant's Package,"  referred  to  in  the  bill  and  marked  in  evi- 
dence, as  does  the  said  '  Defendant's  Second  Package.'  This 
would  seem  to  be  sufficient;  but,  since  so  much  has  been  said 
about  the  impossibility  of  forming  any  decree  which  would 
prevent  the  sale  of  the  package  complained  of,  and  yet  not 
give  complainant  the  monopoly  of  yellow  paper  for  its  wrap- 
pers, the  following  clause  may  be  added:  '  This  injunction 
shall  not  be  construed  as  restraining  defendant  from  selling 
packages  of  the  size,  weight,  and  shape  of  complainant's 
package,  nor  from  using  the  designation  "  Buffalo  Soap 
Powder,"  nor  from  making  a  powder  having  the  appearance 
of  complainant's  "  Gold  Dust,"  nor  from  using  paper  of  a 
yellow  color  as  wrappers  for  its  packages,  provided  such 
packages  are  so  differentiated  in  general  appearance  from 
said  "  Complainant's  Package,"  that  they  are  not  calculated 
to  deceive  the  ordinary  purchaser.'  " 

§  236.  Injunctions  Against  Use  of  Family  Names  —  Scope 
of. —  The  injunction  issued  in  Cash  v.  Cash  in  the  lower  court,32 
was  in  form  as  given  below,  but  it  was  later  modified  by  the 
Court  of  Appeal.33 

"  The  court  then  ordered  (1)  that  the  defendant  should  be 
restrained  from  carrying  on  the  business  of  a  manufacturer 

81 N.   K.   FairbanTc   Co.   v.    R.    W.  Cash,   84   L.    T.    (Ch.)    N.    S.   352- 

JBell  Mfg.  Co.,  77  Fed.  869-79-1896  1901. 

(C.  C.  A.  2dCir.).  8386   L.    T.   211;   50    Wkly.   Rep. 

81  J.    &    J.    Cash,   Ltd.    v.    Joseph  289-1902. 


Remedies.  455 

or  seller  of  frillings  or  woven  names  or  initials  under  the  name 
of  Joseph  Cash  &  Co.,  or  under  the  name  of  Cash,  and  from  car- 
rying on  any  such  business  under  any  name  or  in  any  manner 
so  as  to  mislead  or  deceive  the  public  into  the  belief  that  the 
business  of  the  defendant  or  the  frillings  or  woven  names  or 
initials  manufactured  or  sold  by  him  were  the  business  of  or 
goods  manufactured  by  the  plaintiffs,  or  that  the  defendant 
was  carrying  on  the  business  formerly  carried  on  at  Coventry 
by  Messrs.  J.  and  J.  Cash,  the  vendors  to  and  predecessors  in 
business  of  the  plaintiffs;  (2)  that  the  defendant  should  be 
restrained  from  making  over  his  business  in  frillings  or  woven 
names  or  initials  to,  or  acting  as  managing  director  of  any 
company  formed  to  carry  on  such  business,  or  having  a  name 
calculated  or  likely  to  mislead  or  deceive  the  public  into  the 
belief  that  the  business,  frillings,  or  woven  names  or  initials 
of  such  company  was  the  business,  frillings,  or  woven  names 
or  initials  of  the  plaintiffs,  or  that  such  company  was  carry- 
ing on  the  business  formerly  carried  on  at  Coventry  by 
Messrs.  J.  and  J.  Cash,  and  from  otherwise  assisting  any  such 
company  to  so  mislead  or  deceive  the  public;  (3)  that  the  de- 
fendant should  be  restrained  from  soliciting  or  assisting  any 
limited  or  other  company,  or  other  person  or  persons,  to  solicit, 
whether  by  circular  or  otherwise,  any  former  customer  or 
customers  of  the  firm  of  Messrs.  J.  and  J.  Cash  of  Coventry, 
to  deal  with  the  defendant  or  any  such  company,  or  person 
for  goods  of  a  kind  manufactured  by  the  old  firm  of  Messrs. 
J.  and  J.  Cash,  and  still  manufactured  by  the  plaintiffs, 
or  not  to  deal  with  the  plaintiffs  for  goods  of  the  kind  afore- 
said. ' ' 

The  form  of  this  injunction  order  on  appeal  is  given  in  the 
chapter  on  Family  Names  or  Surnames  as  Trade  Names. 

The  decree  may  forbid  the  use  of  a  name  unless  informa- 
tion that  the  concern  using  it  is  not  the  same  concern  which 
has  been  accustomed  to  use  it,  is  given  every  time  it  is  used. 
In  Hall's  Safe  Co.  v.  Herring-Hall-Marvin  Safe  Co.Zi  the 
form  of  the  injunction  was  as  follows:    "  The  defendant,  the 

84 146  Fed.  37-1906  (C.  C.  A.  6th 
Cir.) ;  appealed  in  208  U.  S.  554- 
1908. 


456  Unfair  Business  Competition. 

Hall's  Safe  Company,  *  *  *  are  perpetually  enjoined 
from  carrying  on  the  safe  or  vault  business  in  the  name  of 
the  Hall's  Safe  Company,  or  any  name  having  similarity  to 
the  name  Hall's  Safe  &  Lock  Company,  without  also  giving 
information  to  the  public  that  it  is  not  the  business  formerly 
carried  on  by  the  Hall's  Safe  &  Lock  Company,  and  from 
marking,  advertising,  or  otherwise  designating  its  safes  and 
vaults  as  the  products  of  the  Hall's  Safe  &  Lock  Company 
or  its  successors  in  business,  or  pretending  that  it  is  carrying 
on  the  business  started  by  Joseph  Hall,  and  continued  by  the 
Hall's  Safe  &  Lock  Company,  and  from  interfering  in  any 
manner  with  the  exclusive  right  of  the  complainant  to  possess 
and  enjoy  the  good- will  acquired  by  the  Hall's  Safe  & 
Lock  Company,  and  from  using  the  trade  name  of  said  last- 
named  company  without  at  the  same  time  so  qualifying  such 
trade  name  as  to  show  that  the  trade  name  so  used  is  not  the 
one  formerly  used  to  designate  the  products  of  Hall's  Safe  & 
Lock  Company  "  (p.  44).    This  decree  has  been  affirmed.35 

§  237.  Injunction  Against  the  Use  of  the  Name  of  an  ex-Part- 
ner or  Former  Member  of  a  Corporation  or  Owner  of  a 
Patent. — Where  one  leaves  a  corporation  which  bears  his 
name,  the  company  retaining  the  right  to  continue  to  use  the 
name,  an  injunction  against  him  for  unfair  use  of  his  name 
should  forbid  its  use  in  general  terms.  But  where  there  are 
patents  bearing  his  name,  that  name  may  be  used  to  show 
that  goods  are  made  under  that  patent  —  as  under  the  "  Pen- 
berthy  Patent,"  or  the  "  X  Patent,"  but  such  use  even  must 
be  with  care  that  no  false  impression  is  given  thereby.  In 
Penberthy  Injector  Co.  v.  Lee,36  the  court  decreed  "  that  the 
several  defendants  severally  and  jointly,  and  the  firm  and 
corporation  known  as  the  Lee-Penberthy  Manufacturing 
Company,  their  counselors,  attorneys,  solicitors,  agents, 
servants,  and  workmen,  be,  and  they  are,  each  and  every  one 
of  them,  enjoined  from  the  use  of  the  name  l  Penberthy  '  in 
the  firm  or  corporate  name  in  any  way,  and  from  the  use  of 
the  name  '  Penberthy  '  upon  their  product,  packages,  or 
advertising  matter,  or  advertisements.    But  said  defendants 

35  208  U.  S.  554-1908. 
a8120   Mich.    174-79-1899;    78   N. 
W.  1074. 


Remedies.  457 

may  indicate  that  their  product  is  manufactured  under  Pen- 
berthy's  patent,  if  such  be  the  fact,  provided  that  with  each 
and  every  such  statement,  and  in  connection  therewith,  there 
shall  be  also  indicated,  in  type  equally  as  prominent,  that 
1  W.  Penberthy  is  distinct  from,  and  has  no  connection  with 
the  original  Penberthy  Injector  Company. '  " 

An  injunction  protecting  a  family  name,  which  is  a  part  of 
a  corporate  name  and  which  has  been  purchased  with  the 
good-will  of  that  corporation,  should  forbid  the  use  of  the 
family  name,  either  alone  or  in  combination,  in  a  corporate 
name,  on  goods  or  in  advertisements  unless  accompanied  by 
information  that  the  one  using  it  is  not  the  person  that  origi- 
nally used  it  or  his  successor,  and  that  the  article  is  not  the 
product  of  that  first  user  of  the  name.17 

§  238.  Damages  and  Accounting  for  Profits. —  A  successful 
complainant  is  entitled  often^  not  only  to  an  injunction,  but  to 
compensation  for  the  loss  that  has  already  resulted  to  him. 
In  an  action  at  common  law  this  would  be  by  way  of  dam- 
ages, awarded  by  a  jury,  while  the  remedy  in  equity  is  an 
accounting  of  profits.  The  right  to  an  accounting  of  profits 
or  damages  may  be  lost  by  laches. 

Eight  to  accounting  of  the  profits  of  an  infringer  of  a  trade- 
mark has  been  held  to  be  barred  by  laches  of  complainant,  who 
for  over  three  years  had  made  no  objection  to  the  use  of  the 
infringing  label,  although  known  to  him.38 

The  fact  that  there  has  been  no  intent  to  defraud  on  the 
part  of  defendant  may  be  taken  into  account  and,  in  a  clear 
case,  as  where  he  has  been  in  ignorance  of  complainant's 
rights,  he  may  be  relieved  from  liability  to  compensate.39 

Regis  v.  Jaynes  &  Co.,39*  deals  with  the  right  of  plaintiff  to 
an  accounting  where  the  defendants  were  well  known  and  the 
plaintiff  was  not,  and  the  offending  goods  were  sold  on  the 
strength  of  the  defendants'  reputation,  not  the  plaintiff's.    In 

87  Herring-Hall-Marvin  Safe  Co*  v.  89  Consolidated  Ice   Co.   v.   Hygeia 

Hall's  Safe  Co.,  208  U.  S.  554-60-  Distilled   Water   Co.,   151   Fed.   10- 

1908.  1907  (C.  C.  A.  3d  Cir.). 

58  N.   K.   Fairbank    Co.   v.   Luckel,  39a  191  Mass.  245. 
King   &    Cake   Soap    Co.,   106   Fed. 
498-1901  (C.  C.  Oreg.). 


458  Unfair  Business  Competition. 

this  case,  the  defendants  were  directed  to  account.  This 
decision  is  questioned  in  an  article  at  p.  620  of  Vol.  20,  Har- 
vard Law  Review. 

§  239.  Election  of  Remedy  by  Plaintiff. —  Election  between 
damages  and  an  accounting  for  profits  may  be  had  in  equity. 
It  is  always  the  privilege  of  one  injured  by  unfair  acts  of 
another  to  sue  at  law  for  damages  or  in  equity  for  an  injunc- 
tion and  for  an  accounting,  as  he  elects.40  If  the  result  shows 
the  election  was  unwise,  the  complainant  cannot  claim  relief 
on  the  ground  he  discarded  in  his  election. 

Plaintiff  set  up  infringement  of  trade-mark  and  simulation, 
and  demanded  an  injunction,  an  account  of  profits,  and  dam- 
ages. If  a  complainant  be  required  to  elect  between  an 
accounting  of  profits,  such  as  could  be  had  in  an  equitable 
action,  and  damages  for  simulation  of  goods,  such  as  would 
be  recoverable  in  a  common-law  action  as  in  other  cases  of 
fraud,  and  he  elects  to  sue  for  an  injunction  and  accounting 
of  profits,  reserving  the  right  to  sue  for  damages  in  another 
action,  if  the  court  finds  upon  the  evidence  that  there  was 
no  infringement  of  trade-mark  but  was  fraudulent  simula- 
tion, he  is  not  entitled  to  an  accounting^  nor,  in  view  of  his 
election,  to  the  damages  to  which  he  would  otherwise  have 
been  entitled;  and  will  be  awarded  nothing  but  an  injunction.41 

§  240.  Damage  to  Reputation  of  Product  to  be  Reckoned 
as  Well  as  Loss  of  Profits. — American  courts  are  not  inclined 
to  limit  compensation  to  the  profits  made  by  the  infringing 
party,  but  to  allow  those  as  a  minimum  measure  of  damages, 
and,  in  addition,  enough  to  cover  any  further  loss,  such  as  by 
damage  to  reputation.  Thus  in  Graham  v.  Plate,42  it  was  held 
that  where  a  trade-mark  has  been  infringed,  the  whole  profits 
from  sales  of  the  infringing  goods  are  the  minimum  measure 
of  damages,  and  damages  are  not  limited  to  such  profits. 
This  rule  is  based  on  the  fact  that  repayment  of  profits  would 
not  in  all  cases  completely  indemnify  the  plaintiff.  The 
damage  has  been  said  to  consist  of  two  elements:  (1)  loss  of 
justly-earned  profits;    (2)    injury  to  the  reputation  of  the 

*Hagan  &  Dodd  Co.  v.  Bigbers,      Taylor,  27  Ky.  L.  Rep.  625;  85  S. 
1  Ga.  App.  100;  57  S.  E.  970-1907.      W.  1085-1905. 

41  E.  H.  Taylor,  Jr.,  &  Sons  Co.  v.  *  40  Cal.  593-1871. 


Eemedies.  459 

product;  and  an  award  to  cover  one  will  not  recompense  loss 
on  account  of  the  other.  "  The  question  of  the  true  measure 
of  damages  in  cases  of  this  sort  is  an  interesting  one.  The 
injured  party  is  entitled  to  full  compensation  for  the  injury, 
but  how  shall  that  be  measured?  Manifestly,  the  profits 
which  the  infringer  had  made  would  not  in  all  cases  be  com- 
pensation to  the  injured.  The  latter 's  loss  in  part  inheres 
in  the  failure  to  acquire  a  just  and  deserved  gain;  in  the 
injury  to  the  reputation  of  his  product  by  reason  of  the  sub- 
stitution of  the  spurious  article.  The  latter  element  is  diffi- 
cult, if  not  impossible,  of  accurate  measurement.  It  can  only 
be  approximately  compensated  by  an  allowance  in  the  nature 
of  punitory  damages,  resting  largely  in  discretion.  But  as 
to  the  actual  loss,  is  it  not  more  reasonable  to  say  that  the 
loss  sustained  is  the  profit  which  the  injured  party  would 
have  made  if  the  genuine  goods  had  been  supplied,  and  not 
the  profit  which  the  party  inflicting  the  injury  actually  made 
by  the  unlawful  sale?  That  is  to  say,  ought  not  the  injured 
party  to  receive  the  difference  between  the  cost  to  him  of  the 
manufacture  of  his  article  and  the  price  at  which  he  is  able 
to  dispose  of  it  in  the  market,  together  with  such  sum  as  the 
court  in  its  discretion  should  think  the  genuine  article  had 
lost  in  its  reputation  by  substitution  of  the  spurious  article? 
Should  not  regard  be  had  to  complainant's  loss,  rather 
than  to  defendant's  profits?  (citing  Hall  v.  Stern,  (C.  C.)  20 
Fed.  788).  It  has  been  supposed  that  the  measure  of  dam- 
ages in  these  cases  is  analogous  to  the  measure  of  damages 
allowed  for  infringement  of  a  patent,  but  Judge  Sawyer  sug- 
gests that  the  analogy  will  not  hold."43 

§  241.  Exemplary  Damages. —  Exemplary  or  discretionary 
damages  are  sometimes  allowed.  The  actual  damage  shown 
is  not  binding  on  the  court,  but  it  may  direct  further  damage, 
in  its  discretion,  according  to  the  circumstances  of  the  case  be- 
fore it.  There  must  be  usually  some  substantial  injury  to 
warrant  such  damages  being  awarded. 

43  Walter   Baker   &    Co.   v.    Slack, ' 
130  Fed.  514-19-20-1904   (C.  C.  A. 
7th  Cir.). 


460  Unfair  Business  Competition. 

"Where  an  employee  of  defendant,  without  his  knowledge,  In 
a  very  few  instances  put  inferior  cigars,  not  made  by  plaintiff, 
in  a  box  bearing  plaintiff's  trade-mark,  and  sold  them  as  his 
cigars,  and  no  actual  damages  were  proved,  the  plaintiff  was 
given  nominal  damages,  but  was  held  not  entitled  to  exemplary 
damages.44 

The  court  will  not  speculate  as  to  what  proportion  of  the 
profits  made  on  infringing  goods  would  have  been  made  if 
the  goods  had  been  sold  under  legitimate  names,  marks,  and 
indicia.  The  whole  of  the  net  profits  are  forfeited  to  com- 
plainant. It  would  be  most  difficult  for  the  complainant  to  give 
speculative  evidence  as  to  what  part  of  the  defendant's  profits 
were  due  to  the  unfair  conduct,  which  would  be  of  sufficient 
value  to  warrant  the  court  following  it. 

In  Saxlehner  v.  Eisner  &  Mendelson  Co.,46  it  was  held,  that 
it  was  not  incumbent  upon  a  complainant  to  show  what  part  of 
defendant's  profits  were  due  to  the  simulation  of  label  and  sale 
of  the  goods  which  were  to  be  accounted  for.  The  infringing 
party  "  will  hardly  be  heard  to  say  that  he  would  have  been 
equally  successful  had  he  used  honest  indicia  and  labels.  It 
would  be  casting  an  intolerable  burden  upon  the  complainant 
in  such  cases  if,  after  proving  the  fraud,  the  infringement  and 
the  profits,  he  were  compelled  to  enter  the  realms  of  specula- 
tion and  prove  the  precise  proportion  of  the  infringer's  gains 
attributable  to  his  infringement  "  (p.  24). 

§  242.  Deduction  of  Defendant's  Expenses  from  Profits. — 
There  appears  to  be  some  conflict  in  the  decisions  as  to  what 
expenses  may  properly  be  deducted  from  the  gross  profits 
upon  an  accounting  of  this  kind.  The  better  opinion  seems  to 
be  that  the  expenses  incident  to  the  selling  of  the  infringing 
goods,  or  a  fair  and  proportionate  part  of  the  general  selling 
expenses  of  the  party,  are  to  be  deducted  from  gross  profits, 
but  this  rule  is  questioned  by  Jenkins,  J.,  in  Walter  Baker  S 
Co.  v.  Slack.™  The  expenses  of  salesmen,  who  sold  other  goods 
than  those  complained  of,  should  not  be  charged  exclusively 

"Lampert  v.  Judge  £  Dolph  Drug  "138  Fed.  22-1905   (C.  C.  A.  2d 

Co.,  119  Mo.  App.  693-1906;  100  S.  Cir.). 

W.  659.  See  also  Addington  v.  CulU-  <s  130  Fed.  514-1904. 
none,  28  Mo.  App.  238-1887. 


Remedies.  461 

against  the  profits  from  the  goods  complained  of.47  In  the  com- 
putation upon  an  accounting  for  the  profits  made  by  a  defend- 
ant who  is  found  to  have  carried  on  unfair  competition,  there 
should  be  deducted  from  the  receipts  the  cost  of  manufacture, 
and  a  proportionate  part  of  the  general  selling  expenses  of 
the  business,  in  spite  of  the  fact  that  it  does  not  appear  that 
the  selling  expenses  were  increased  by  the  sale  of  the  infring- 
ing goods.48  Where  it  appears  that  the  unlawful  business  was 
carried  on  in  connection  with  defendant's  regular  business 
and  by  the  same  agencies,  so  as  to  involve  substantially  no  ad- 
ditional expense,  no  expenses  will  be  deducted.  ' '  The  unlaw- 
ful venture  increased  the  gross  profits  without  swelling  the 
gross  expenses.  Furthermore,  the  wrongful  act  in  question 
was  committed  knowingly,  without  a  shadow  of  excuse  "  (p. 
922  ).49 

The  case  of  W.  R.  Lynn  Shoe  Co.  v.  Auburn-Lynn  Shoe 
Co.,50  is  authority  for  the  following  rules  as  to  computing  the 
amount  due  in  an  accounting  of  profits. 

Sales  under  a  trade  name,  condemned  as  involving  unfair 
competition,  but  not  under  unauthorized  marks,  made  to  per- 
sons who  knew  the  goods  were  made  by  defendant,  or  to  per- 
sons at  a  distance  who  knew  nothing  of  plaintiff,  are  not  to  be 
assumed  to  have  been  injurious  to  plaintiff. 

Salaries  of  managing  officers  may  be  included  in  the  cost  of 
the  business,  in  computing  profits,  except  where  the  officers 
are  practically  the  corporation. 

A  successful  plaintiff  is  entitled  to  recover  not  only  an 
amount  equivalent  to  defendant's  profits,  but  also  any  losses 
resulting  to  its  own  business  from  the  unfair  competition,  and 
if  losses  can  be  shown,  it  is  not  necessary  that  they  be  capable 
of  exact  computation;  if  a  reasonable  estimate  can  be  made, 
that  is  enough.  No  accounting  for  damages  will  be  directed, 
where  the  damages  appear  too  small  to  justify  the  expense  of 
taking  an  account  ;51  nor  where  there  is  no  theory  on  which  a 

"Saxlehner  v.   Eisner   &   Mendel-  Co.,  46  Fed.  921-1891   (C.  C.  E.  D. 

son   Co.,   138   Fed.   22-1905    (C.   C.  Mo.). 
A.  2d  Cir.).  ro100  Me.  461;  69  Atl.  569-1907. 

48  Cutter    v.    Gudebrod   Bros.    Co.,  "  Saxlehner  v.   Eisner   &   Mendel- 

190  N.  Y.  252-1907;  83  N.  E.  16.  son  Co.,  88  Fed.  61-1898  (18)   (C.  C. 

*  Anonyme    v.    Western    Distilling  S.  D.  N.  Y.). 


462  Unfair  Business  Competition. 

substantial  recovery  based  on  a  rational  rule  of  damages  can 
be  had,  or  where  an  attempt  to  separate  the  defendant's  ille- 
gitimate profits  from  his  legitimate  profits  would  be  based 
upon  conjecture  and  speculation.53  Where  damages  were 
only  a  few  dollars,  reference  to  a  master  to  fix  amount  is 
properly  refused.53  Interest  is  properly  added  to  the  amount 
ascertained  upon  an  accounting  for  profits,  from  the  time  of 
the  commencement  of  the  action.54 
§  243.  Destruction  or  Delivering  Up  of  Offending  Articles. 

—  This  is  sometimes  ordered.55  Where  the  goods  and  labels 
seized  are  considered  susceptible  of  a  lawful  use  they  will 
not  be  ordered  destroyed.56  Where  a  plaintiff  did  not  act  for 
six  months  after  he  knew  of  the  defendant's  unfair  conduct, 
he  was  given  an  injunction,  but  other  relief  was  denied  him 
because  of  his  laches?7 

§  244.  Accounting  Refused  Where  Injunction  is  Denied. — 
If  the  right  to  an  injunction  is  not  established  in  an  unfair 
competition  suit,  as  by  reason  of  adequate  disclaimer  and  dis- 
continuance by  defendant,  equity  will  not  retain  jurisdiction 
for  the  purpose  of  an  accounting;  complainant  must  resort  to 
an  action  for  damages.58 

§  245.   Contempt  of  Court  by  Failure  to  Obey  Injunctions. 

—  In  Siegert  v.  Eiseman,59  the  court  refused  to  punish  de- 
fendant for  contempt,  as  having  violated  an  injunction  against 
the  sale  of  Abbott's  as  Angostura  bitters,  where  a  salesman 
had  sold  to  an  agent  of  plaintiff  a  bottle  of  Abbott's,  with  a 
bill  describing  it  as  Angostura,  and  it  did  not  appear  that  the 
salesman  intended  to  sell,  or  did  sell,  the  bitters  as  Angostura, 
and  was  satisfied  that  if  he  did  so  it  was  without  defendant's 
approval. 

"Ludington  Novelty  Co.  v.  Leon-  "  Jones  v.  Eallworth,  14  R.  P.  C. 

ard,  127  Fed.  155-1903    (C.  C.  A.  225-1897. 

2d  Cir.).  66  Fischer  v.  Blank,  138  N.  Y.  244- 

*3Giragosian  v.   Chuijian,    (Mass.)  1893;  33  N.  E.  1040. 
80  N.  E.  647-1907;  Barnett  v.  Leu-  "County   Chemical  Co.  v.   Frank- 
chars,  34  L.   T.    (Ch.)    N.    S.   495-  enburg,  21  R.  P.  C.  722-1904. 
1865.  B8  Van  Rault  v.  Schneck,  159  Fed. 

u  Cutter    v.    Gudebrod    Bros.    Co.,  248-1908    (C.  C.  Wis.). 

190  N.  Y.  253-1907;  83  N.  E.  16.  59157  Fed.  314-1907  (C.  C.  N.  Y.). 


CHAPTER  XVII. 

Defenses. 

Section  246.  The  defense  that  the  plaintiff  and  defendant  are  not  in  com- 
petition with  each  other. 

247.  The  defense  that  the  name,  mark,  form,  shape  or  other  device 

in  question  has  not  been  exclusively  used  by  the  complainant 
but  is  in  common  use. 

248.  The   defense  that   the   defendant's  article  is  as  good   as  the 

plaintiff's. 

249.  The  defense  that  the  defendant  has  no  intent  to  pass  off  his 

goods  as  plaintiff's  goods. 

250.  The  defense  that  the  goods  were  not  marked  with  any  spurious 

marks  or  names. 

251.  The   defense   that   defendant's   marks   differ  sufficiently   from 

complainant's  to  be  capable  of  registration  as  distinct  marks. 

252.  The  defense  that  representations  objected  to  by  the  plaintiff 

are  true. 

253.  The  defense  that  the  deception  is  due  not  to  the  defendant  but 

to   a  jobber  or   retailer,   or  other  purchaser,    from  the   de- 
fendant. 

254.  The  defense  that  defendant  was  only  the  maker  of  the  label 

or  container  complained  of  and  was  not  responsible  for  its 
ultimate  use  by  him  for  whom  it  was  made. 

255.  The  defense  that  defendant  was  acting  only  as  agent  for  another 

and  received  none  of  the  profits. 

256.  The  defense  that  complainant's  title  was  not  properly  estab- 

lished. 

257.  The  defense  that  the  offense  is   too  trivial  for  the   court   to 

notice. 

258.  The  defense  that  plaintiff's  goods  are  worthless  or  useless. 

259.  The  defense  that  defendant's  name  is  two  or  more  words,  while 

plaintiff's  is  one,  and  hence  different. 

260.  The  defense  that  plaintiff  has  acted  unfairly  toward  third  per- 

sons not  connected  with  the  suit  at  bar. 

261.  The   defense   that   plaintiff  is   an   impostor  and    deluding  the 

public. 

262.  The  defense  that  plaintiff  is  making  misrepresentations  in  his 

own  business. 

263.  Misrepresentation  usually  but  not  always  an  affirmative  defense. 

264.  The  misrepresentation  must  be  as  to  the  subject-matter  of  the 

suit. 

265.  Misrepresentations  discontinued  before  suit  is  brought. 

266.  Misrepresentations  must  be  intentional  and  material. 

[463] 


464  Unfair  Business  Competition. 

Section  2G7.  Misrepresentations  as  to  ingredients  and  the  nature  and  effect 
of  a  medical  preparation. 

268.  Misrepresentations  must  be  as  to  ingredients  that  are  essential. 

269.  Extravagant  claims  as  to  efficacy  of  medicines. 

270.  Misrepresentations  as  to  manufacture,  place  of  manufacture, 

or  origin  of  goods. 

271.  Misrepresentation  as  to  maker  of  goods. 

272.  Continuing  use  of  name  of  predecessor. 

273.  Misrepresentation  as  to  unessential  details. 

274.  Misrepresentations  implying  a  claim   of   monopoly, —  Use  of 

term  "  Patented." 

275.  Misrepresentation       by     use     of     term     "  Copyrighted "     or 

"  Registered." 

276.  Misrepresentation   by  laudatory  expressions   and  exaggerated 

trade  phrases. 

277.  Miscellaneous  cases  of  misrepresentation  deemed  harmless. 

278.  Claiming  falsely  to  be  a  corporation. 

279.  Use  of  term  "  Established  in." 

280.  Abandonment. 

281.  Kinds  of  laches. 

282.  Laches  in  the  sense  of  mere  delay. 

283.  First  user  of  mark  may  revoke  license  implied  from  laches. 

284.  No  presumption  of  acquiescence  arises  from  an  exclusive  right. 

285.  Material  delay  bars  right  to  an  accounting  of  profits. 

286.  Laches   may  bar  right  to  order  for  destruction   of  offending 

goods. 

287.  Laches  which  bars  right  to  preliminary  injunction. 

288.  Acquiescence,  in  the  sense  of  inaction  upon  which  others  have  a 

right  to  rely. 
290.  Test  by  winch  to  determine  acquiescence. 

Various  matters  are  sometimes  set  up  in  defense  which 
hardly  require  separate  consideration  here,  since  the  questions 
involved  in  such  pleas  have  already  been  discussed  in  previous 
chapters.  The  defenses  now  referred  to  attack  the  complain- 
ant's right  to  sue,  on  account  of  the  alleged  absence  of  one  or 
other  of  the  elements  of  a  cause  of  action  for  unfair  competi- 
tion.   The  following  are  examples  of  defenses  of  this  sort. 

§  246.  The  Defense  that  the  Plaintiff  and  Defendant  are 
not  in  Competition  with  Each  Other.—  It  is  a  valid  defense 
to  an  action  of  unfair  competition  that  the  defendant  is  not 
in  the  same  line  of  business  as  the  plaintiff,  and  hence  cannot 
be  in  direct  competition  with  him.  If  not  in  direct  competition, 
the  defendant  might  commit  various  acts  which  under  ordinary 
circumstances  would  be  unfair  competition,  but  which  by  rea- 


Defenses.  465 

son  of  the  lack  of  opposing  interest,  as  between  the  two  parties, 
would  not  be  considered  as  unfair  competition.  An  instance 
of  this  is  where  the  parties  make  different  articles.  The 
difference  must  be  a  decided  one  to  give  the  defendant  the 
right  to  use  this  defense.1 

§  247.  The  Defense  that  the  Name,  Mark,  Form,  Shape,  or 
Other  Device  in  Question  has  not  been  Exclusively  Used  by- 
Complainant,  but  is  in  Common  Use. —  Here  certain  distinc- 
tions are  to  be  made.  If  that  which  the  complainant  alleges 
belongs  to  him  exclusively  has  really  been  common  property 
all  along,  his  case  obviously  fails.  But  it  is  not  enough  that 
one  feature  of  the  goods  in  question,  or  of  their  dress,  taken 
separately,  is  in  common  use,  because  the  combination  of 
these  features  may  produce  a  general  effect,  which  distin- 
guishes the  goods  to  the  public  eye,  so  that  defendant  has  in 
fact  so  used  even  these  common  features  as  to  cause  unfair 
competition.  This  has  already  been  dealt  with  under  the 
chapter  on  Dress. 

The  general  rule  in  such  cases  is  illustrated  by  the  following 
statement  in  Scriven  v.  North?  "A  stamp  with  the  words 
printed  in  straight  lines  would  identify  the  defendants'  goods 
as  easily  as  the  oval  stamp.  Granted  that  the  oval  form  is  in 
common  use,  the  straight  is  equally  common,  and  was,  in  fact, 
used  formerly  by  defendants  and  complainants  alike;  and 
when  the  proof  shows,  as  it  does,  that  after  the  complainants 
adopted  the  oval  form,  the  defendants  adopted  a  stamp  re- 
sembling it,  when  they  show  no  good  reason  for  such  change, 

1  Elgin  Nat.    Watch   Co.   v.   Love-  which    complainant    does    not    deal, 

land,  132  Fed.  41-1904  (C.  C.  N.  D.  and   therefore   no  injury   results   or 

Iowa).     "It  is  urged  that  the  busi-  can  result  to  it.    It  is  true  that  com- 

ness  of  the  defendants  as  conducted  plainant  could  not  complain  of  the 

by  them  is  not  in  competition  with  use  of  the  word  '  Elgin '  by  a  raanu- 

that  of  the  complainant;  that  com-  facturer  or  vendor  of  some  product 

plainant  manufactures  watch  move-  not  of  the  same  general  kind  as  the 

ments  only;  that  defendants  do  not  complainant's.        Such      a     business 

manufacture  watch   movements,   but  would   not   be    in    competition    with 

confine    their    business    to    sales    of  it"    (p.   51).     Held   unfair   compe- 

watches  upon  mail  orders  only,  and  tition. 

assortments    of    jewelry,    silverware,  3 134  Fed.  366-1904  (4th  Cir.) ;  67 

and  other  goods  of  a  cheap  class,  in  C.  C.  A.  348. 

30 


466  Unfair  Business  Competition. 

or  any  reason  at  all,  except  that,  being  a  common  form,  they 
had  the  right  to  use  it  as  well  as  complainants,  and  we  find, 
as  we  do,  that  there  is  a  resemblance  between  the  two,  and  no 
reason  appears  for  such  resemblance,  except  that  it  was  calcu- 
lated to  deceive,  we  must  conclude  that  it  was  adopted  for  that 
purpose  "  (p.  375). 

The  common  use  contemplated  by  this  defense  is  either  a 
use  of  what,  in  its  nature,  cannot  be  appropriated  by  any  one 
trader,  or  else  a  use  independent  of  and  antecedent  to  that  of 
the  complainant.  The  mere  fact  that  many  others  besides  the 
defendant  have  adopted  and  are  using  distinctive  features 
originated  by  the  complainant,  in  other  words  that  there  are 
many  other  infringers,  is  no  defense  unless  the  originator  has 
lost  his  rights  by  abandonment  or  dedication  to  the  public,  or 
by  long  continued  acquiescence  in  public  use. 

It  is  true  then  that  the  use  by  the  plaintiff  of  a  common 
form,  or  shape,  or  size,  which  ordinarily  anyone  may  use,  may 
have  the  effect  of  preventing  the  defendant  from  using  it, 
where  it  is  not  essential  to  the  latter 's  purpose,  or  where  it 
is  adopted  with  the  purpose  of  deceiving. 

Speaking  of  the  method  used  by  defendants  in  making  their 
goods,  the  court  said  in  Chickering  v.  Chickering  d  Sons,3  that 
it  was  defendants'  duty  "  to  distinguish  their  pianos  from  the 
'  Chickering  '  pianos,  and  they  cannot  plead,  in  avoidance  of 
that  duty,  that  others  of  different  names  used  that  style  of 
lettering  (old  English).  Their  duty  was  to  distinguish,  not  to 
imitate." 

§  248.  The  Defense  That  the  Defendant's  Article  is  as  Good 
as  the  Plaintiff's. —  It  is  obvious  on  principle,  and  well 
settled  by  the  decisions,  that  it  is  no  defense  that  defendant's 
article  is  as  good  as,  or  even  better  than,  complainant's.  The 
defendant  must  offer  his  goods  for  what  they  are,  and  trust  to 
their  intrinsic  merits  to  win  a  market.  The  wrong  to  com- 
plainant, through  diverting  trade  intended  for  Mm,  is  evident, 
regardless  of  the  quality  of  defendant's  goods;  and,  even  as 
far  as  the  consideration  of  protecting  the  public  is  concerned, 
it  is  obvious  that  the  right  to  deceive  it,  even  for  its  own  good, 
could  never  be  admitted. 

3 120  Fed.   69-73-1903    (C.   C.   A.  7th  Cir.). 


Defenses. 


467 


In  the  first  recorded  cases  relating  to  trade  names,  the  courts 
based  their  interference  on  the  ground  that  it  was  unlawful 
to  sell  inferior  goods,  giving  out  that  they  were  goods  of  a 
known  brand  with  which  the  public  associated  a  particular 
grade  of  merit  or  quality.  In  most  cases,  goods  made  as 
copies  of  other  goods  are  in  fact  inferior.  But  Blofield  v. 
Payne,4"  a  case  at  law,  and  Edelsten  v.  Edelsten,5  a  case  in 
equity,  long  ago  held  it  to  be  "  an  actionable  injury  to  pass  off 
goods  known  not  to  be  plaintiff's,  as  and  for,  the  plaintiff's, 
even  though  not  inferior."6  Cheapness  is  not  an  offense,— 
there  are  markets  where  cheap  articles  are  more  in  demand 
than  costly  ones.  Every  man  has  a  complete  right  to  make  as 
cheap  an  article  as  he  will,  but  no  person  has  the  right  to  make 
or  sell  a  cheap  and  inferior  article,  dressed  in  the  guise  of  a 
superior  article  made  by  another,  and  so  deceptively  palm  it 


4  4  B.  &  Ad.  410-1833,  an  action 
of  the  case.  The  plaintiff  was  the 
manufacturer  of  a  metallic  hone  for 
sharpening  razors,  which  he  wrapped 
up  in  envelopes  containing  directions 
for  its  use  and  other  matters;  the 
same  being  intended  and  serving  to 
distinguish  his  hones  from  those  of 
others.  The  defendants  had  ob- 
tained some  of  the  plaintiff's  wrap- 
pers and  used  them  wrongfully  upon 
hones  of  their  own  manufacture,  and 
sold  such  hones  as  and  for  the  plain- 
tiff's for  their  own  gain.  No  proof 
was  given  of  any  actual  damage. 
The  jury  found  for  the  plaintiff  with 
one  farthing  damages,  and  stated 
that  they  thought  that  the  defend- 
ant's hones  were  not  inferior  to  the 
plaintiff's.  The  defendants  then 
moved  for  a  nonsuit,  but  the  court 
held  that  the  plaintiff  was  entitled 
to  recover  some  damages  by  reason 
of  the  fraudulent  use  of  his  wrap- 
per, and  refused  to  grant  a  rule  to 
show   cause.     The   case   decides  that 


it  is  no  answer  to  such  a  suit  to 
show  that  the  simulated  article  is  as 
good  as  the  genuine  manufacture. 

8 1  De  G.  J.  &  S.  185-1863. 

'  See  Singer  Mfg.  Co.  v.  Long,  8 
App.  Cas.  15-1882,  at  p.  29;  Prince 
Mfg.  Co.  v.  Prince's  Metallic  Paint 
Co.,  135  N.  Y.  24-1892;  31  N.  E. 
990;  17  L.  R.  A.  129  note.  Owners 
of  land  on  which  was  Prince's  iron- 
ore  mine  made  "  Prince's  Metallic 
Paint."  Plaintiff,  who  was  successor 
of  original  owners,  represented  to 
public  that  that  name  meant  paint 
made  from  ore  from  the  original 
tract  and  later  applied  that  name  to 
paint  made  of  ore  from  other  tracts. 
"  The  jurisdiction  of  equity  to  re- 
strain the  infringement  of  trade- 
marks is  founded  upon  the  right  of 
property  in  the  plaintiff  and  its 
fraudulent  invasion,"  etc.  (id.  p.  37). 
The  fact  that  the  product  of  the 
mines,  other  than  the  original  mine, 
which  were  used  were  equal  to  the 
original  mine,  held  no  defense. 


468  Unfair  Business  Competition. 

off.  This  is  an  injury  both  to  the  honest  manufacturer  and  to 
the  public.7 

§  249.  The  Defense  that  the  Defendant  has  no  Intent  to 
Pass  Off  His  Goods  as  Plaintiff's  Goods. —  The  contention 
that  the  defendant  had  no  intention  of  passing  off  his  goods 
as  the  goods  of  the  plaintiff  is  no  defense,  if,  in  fact,  he  was 
acting  unfairly.  This  is  true,  although  originally  the  defend- 
ant thought  he  had  a  right  to  so  sell  his  goods,  and  did  it 
honestly.  Intent  not  to  injure  a  rival  is  not  an  excuse.8 
Further  cases  on  this  plea  will  be  found  in  the  chapter  on 
Intent. 

§  250.  The  Defense  that  the  Goods  were  not  Marked  with 
any  Spurious  Marks  or  Names. —  It  is  not  a  defense  to  an 
action  for  illegal  use  of  a  trade-mark  or  name  that  no  spurious 
mark  is  put  on  the  goods  themselves  by  the  defendant. 
Where  the  misrepresentation  complained  of  was  done  "  by 
an  advertisement  or  misrepresentation  in  gross,"  to  use  Lord 
Cairns'  phrase,  it  may  be "  quite  as  injurious  in  operation,  as 
the  same  representation  made  upon  the  articles  themselves."  9 

§  251.  The  Defense  that  Defendant's  Marks  Differ  Suffi- 
ciently from  Complainant's  to  be  Capable  of  Registration  as 
Distinct  Marks. —  Tests  applicable  to  questions  of  statutory 
registration  do  not  control  questions  of  unfair  competition. 
There  is  no  statute  in  this  country  to  compel  the  owner  of  a 
name  or  mark  to  register  it.  It  may  be  absolutely  clear  that 
it  can  be  registered,  yet  he  may  prefer  not  to  do  that.  Is  he 
by  this  decision  to  be  barred  from  showing  that  a  rival  is 
making  false  representations  injurious  to  him?      It  would 

7  Scriven  v.  North,  134  Fed.  366-  8  Shepard   v.   Stuart,    Am.    T.   M. 

73-1904;  67  C.  C.  A.  348;  Pillsbury  Cas.    (Price  &  S.)    193;   1  B.  Phil. 

v.    Pillsbury-Washbum    Flour    Mills  117;    Hier   v.   Abrahams,   82   N.   Y. 

Co.,  64  Fed.  841-1894  (C.  C.  A.  7th  519-1880;    Williams    v.    Brooks,    50 

Cir).      From    opinion:      "It    is    no  Conn.  278-1882;  Ligett  &  Myer  To- 

answer  to  the  charge  of  using  a  felse  bacco  Co.  v.  Hynes,  20  Fed.  883-1884 

and  simulated  brand  that  the  article  (D.    C.    Ark.)  ;    Gato   v.    El   Modelo 

covered  by  the  brand  is  of  a  superior  Cigar  Mfg.  Co.,  6  L.  R.  A.  823-1889. 

quality  to  that  which  the  purchaser  9  Singer  Machine  Manufacturers  v. 

desires  to  buy.     You   may   not   de-  Wilson,  L.  R.  3  App.  Cas.  376-1877, 

^eive    the    purchaser    for    his    own  at  p.  389. 
benefit"  (id  p.  848). 


Defenses.  469 

amount  to  this  were  this  defense  available,  for  much  damage 
may  be  done  by  names  quite  different  and  by  marks  which  are 
very  dissimilar.  This  defense  is  practically  an  attempt  to 
define  what  similarity  is.  To  do  this  would  tie  the  court  to 
a  definition,  which  would  be  a  serious  error. 

In  Mitchell  v.  Henry,10  it  was  contended  that  defendant 
could  register  his  mark,  and  hence  there  was  no  unfair  com- 
petition. Said  the  court:  "  The  question  is  not  simply 
whether  or  no,  putting  the  plaintiffs'  and  defendants'  marks 
side  by  side,  one  might  be  so  different  from  the  other  as  to  be 
capable  of  registration  as  a  distinct  mark,  or  whether  the 
plaintiffs  have  themselves  registered  trade-marks  which  have 
no  greater  distinction  between  them  than  the  distinction  be- 
tween the  mark  of  the  plaintiff's  and  that  of  the  defendants,, 
for  slight  distinctions  between  the  plaintiffs'  marks  may  dis- 
tinguish different  classes  of  the  plaintiffs'  goods,  but  the 
question,  in  my  opinion,  is  whether  the  defendants  are  so 
selling  their  goods  as  to  pass  them  off  as  the  goods  of  the 
plaintiffs." 

§  252.  The  Defense  that  Representations  Objected  to  by 
Plaintiff  are  True. —  The  defense  is  sometimes  set  up  that  the 
representation  by  the  defendant,  to  which  the  plaintiff  objects, 
is  a  true  statement,  and  the  defendant  is  therefore  not  in  the 
wrong,  because,  to  use  the  words  of  the  Supreme  Court  of 
the  United  States:  "  Equity  will  not  enjoin  against  telling 
the  truth."  u  This  statement  has  been  qualified  by  the  Mis- 
souri court,  which  says  that  "  this  remark  must  be  limited 
to  cases  where  the  truth  is  honestly  told,  and  can  have  no 
application  to  a  case  where  it  is  told  with  intent  to  deceive 
and  does  deceive."  12  The  truth  can  be  told  dishonestly  with 
fraudulent  intent.  It  might  be  said  that  the  principal  mission 
of  the  law  of  unfair  competition  is  to  prevent  unscrupulous 
rivals  from  telling  the  truth  dishonestly  and  with  intent  to 
injure.  The  malicious  trade  rival  tries  to  tell  the  truth 
about  his  own  name,  about  the  place  where  he  manufactures 
his  goods,  about  his  patents,  oftentimes  with  the  sole  idea  of 

M15  Ch.  Div.  181-93-1880.  "American    Brewing    Co.    v.    St. 

11  Canal  Co.  v.  Clark,  80  U.  S.  311-  Louis  Brewing  Co.,  47  Mo.  App.  14- 
1871,  at  p.  327.        '  1891,  at  p.  20. 


470  Unfair  Business  Competition. 

so  telling  it  as  to  injure  the  business  of  his  competitor.  This 
the  law  does  not  allow.  In  unfair  competition  cases,  literal 
or  formal  truth  is  not  enough.  The  question  is,  what  im- 
pression will  be  made  on  the  public  mind?  Nor  is  it  a  de- 
fense to  an  action,  the  gist  of  which  is  a  charge  of  decep- 
tion, to  reply  that  the  words  uttered  by  the  defendant  were 
the  literal  truth,  for  the  truth  may  be  stated  in  a  way  likely 
to,  and  that  does,  deceive.  What  is  required  is  that  a  party 
shall  not  conduct  his  business  so  that,  by  what  he  says  or  does, 
he  deceives  customers  to  their  injury,  or  to  that  of  a  com- 
petitor.13 

§  253.  The  Defense  that  the  Deception  is  Due  not  to  the 
Defendant,  but  to  a  Jobber  or  Retailer  or  Other  Purchaser 
from  the  Defendant. —  It  is  well  settled  that  a  manufacturer 
who  puts  in  the  hands  of  the  immediate  purchaser  the  means 
of  deceiving  the  ultimate  purchaser  is  chargeable  with  unfair 
competition.  The  possibility  that  the  retailer  may  not  be 
honest  in  such  matters  must  be  taken  into  account  by  the 
manufacturer.  The  courts  would  be  without  power  to  give 
aid  in  a  large  number  of  these  cases  were  their  right  to  grant 
relief  limited  to  cases  where  the  immediate  customer  is  de- 
ceived. Whether  "  the  trade  "—  the  jobbers  —  are  deceived 
is  not  the  question.  The  English  decisions  are  most  emphatic 
on  this  point.  "  It  was  argued  that  the  defendant  had  noth- 
ing to  do  with  the  deception  of  the  public.  The  answer  is 
obvious.  Every  person,  who,  intending  to  buy  a  bottle  of 
plaintiff's  sauce  gets,  instead,  a  bottle  of  the  defendant's,  is 
a  customer  taken  from  the  plaintiff  by  this  deceit;  and  if  this 
is  extensively  done,  the  damage  to  the  plaintiff's  trade  would 
be  serious."  14  "  No  man  is  entitled  to  represent  his  goods  as 
l)eing  the  goods  of  another  man;  and  no  man  is  permitted  to 
use  any  mark,  sign  or  symbol,  device  or  other  means,  whereby, 
without  making  a  direct  false  representation  himself  to  a 
purchaser  who  purchased  from  him,  he  enables  such  pur- 
chaser to  tell  a  lie  or  to  make  a  false  representation  to  some- 
body else  who  is  the  ultimate  customer.  That  being,  as  it 
appears  to  me,  a  comprehensive  statement  of  what  the  law 

13  N.  K.  Fairbank  Co.  v.  Swift  &  u  Powell    v.    Birmingham    Vinegar 

Co.,  64  111.  App.  479-90-1896.  Brewery  Co.,  2  Ch.  54-83-1896. 


Defenses.  471 

is  upon  the  question  of  trade-mark  or  trade  designation,  I 
am  of  the  opinion  that  there  is  no  such  thing  as  a  monopoly, 
or  a  property  in  the  nature  of  a  copyright,  or  in  the  nature  of 
a  patent,  in  the  use  of  any  name.  Whatever  name  is  used  to 
designate  goods,  anybody  may  use  that  name  to  designate 
goods;  always  subject  to  this,  that  he  must  not,  as  I  said, 
make  directly,  or  through  the  medium  of  another  person,  a 
false  representation  that  his  goods  are  the  goods  of  another 
person.     That  I  take  to  be  the  law. ' ' 15 

American  cases  are  numerous  which  are  equally  emphatic. 
"  Undoubtedly,  no  one  who  bought  from  the  defendant  was 
ever  deceived.  No  effort  was  ever  made  to  delude  the  trade 
into  the  belief  that  defendant's  salesmen  were  selling  com- 
plainant's goods.  But  equity  regards  the  consumer  as  well 
as  the  middleman.  It  is  to  him,  more  than  to  the  jobber,  or 
wholesale  purchaser,  that  the  various  indicia  of  origin  with 
which  merchants  dress  up  their  goods  appeal ;  and  courts  will 
not  tolerate  a  deception  devised  to  delude  the  consuming  pur- 
chaser by  simulating  -some  well-known  and  popular  style  of 
package.  We  have,  then,  the  case  of  a  manufacturer  who  is 
careful  always  to  sell  its  goods  as  its  own,  but  who  puts  them 
up  in  a  style  of  package  so  similar  to  that  used  by  one  of 
its  competitors,  earlier  in  the  market,  that  unscrupulous  deal- 
ers, who  purchase  from  the  manufacturer  in  order  to  sell  at 
retail  to  consumers,  are  enabled  to  delude  a  large  number  of 
such  retail  purchasers  by  palming  off  upon  them  the  goods 
of  the  manufacturer  as  those  of  its  competitor.  That  this  is 
unfair  competition  seems  apparent,  both  on  reason  and 
authority. "  10  ' '  The  testimony  is  abundant  that  the  goods  of 
defendants  were  sold  as  '  Scriven's,'  and  there  is  sufficient 
resemblance  in  make  and  marks  as  to  make  that  deception 
easy  and  practicable,  and  we  do  not  think  it  is  a  sufficient 
answer  to  say  that  there  are  differences  which  a  careful  exam- 

15  Singer  Mfg.  Co.  v.  Loog,  18  Ch.  N.  S.  54-1881 ;  Brown  v.  Mercer,  37 
Div.  395-412-13-1880.  N.  Y.   Super.   Ct.  265-1874;   Singer 

16  N.  K.  Fairbank  Co.  v.  R.  W.  Mfg.  Co.  v.  Loog,  18  Cb.  Div.  395- 
Bell  Mfg.  Co.,  77  Fed.  869-78-1896  1880 ;  Lever  v.  Goodwin,  36  Ch.  Div. 
(C.    C.    A.    2d    Cir.),    citing    Read  1-1887. 

Bros.  v.  Richardson  &  Co.,  45  L.  T. 


472  Unfair  Business  Competition. 

ination  would  disclose,  or  that  the  retailer  to  whom  the  manu- 
facturer sells  is  not  himself  deceived,  if  the  goods  are  put  up 
in  such  a  way  and  marked  in  such  a  way  that  the  ultimate 
purchaser  could  be  deceived  into  buying  them  as  '  Scriven's  ' 
goods,  or  that  the  manufacturer  should  not  be  held  to  liability 
because  the  shopkeeper  to  whom  he  sells  practices  a  fraud 
upon  his  customers.  The  question  as  to  the  measure  of  such 
liability  and  the  extent  of  it  might  arise  upon  an  accounting, 
but  if  he  knowingly  puts  it  in  the  power  of  the  shopkeeper 
so  to  deceive,  he  should  be  enjoined.  The  power  of  the  courts 
is  not  usually  invoked  for  the  protection  of  the  strong  and 
shrewd,  who  commonly  can  take  care  of  themselves.  It  is  the 
ignorant  and  unwary  that  generally  demand  their  protection, 
and  courts  will  be  without  power  to  afford  a  remedy  in  most 
cases  if  their  right  to  grant  relief  was  limited  to  those  cases 
where  the  immediate  customers  were  deceived  "  (p.  375 ).17 
The  fact  that  the  immediate  vendees  of  one  who  infringes  are 
themselves  not  deceived  is  no  consequence.  The  offense  is 
none  the  less  an  offense  because  the  original  vendors  and 
vendees  may  all  be  parties  to  it.18 

It  has  been  held  that  two  frauds  are  perpetrated  in  these 
cases,  first  on  the  ultimate  buyer  and  second  on  the  other 
manufacturer,  who  loses  trade  by  it.  "  The  simplest  case  is 
where  the  seller  misrepresents  to  the  buyer  that  the  goods 
which  are  being  offered  for  sale  are  the  goods,  not  of  the 
person  who  made  them,  but  of  some  other  manufacturer. 
That  is  a  case  merely  between  the  buyer  and  seller.  Then 
comes  the  case  where  the  manufacturer,  by  devices  which 
are  to  accompany  the  goods  on  their  sale  in  the  market,  gets 
them  up  in  such  a  form  as  to  be  calculated  to  deceive  the 
ultimate  buyer  into  the  belief  that  the  goods  which  he,  the 
manufacturer,  is  putting  on  the  market  are  the  goods  of 
some  other  maker.  Here,  generally  speaking,  a  double  fraud 
is  committed;  first,  there  is  the  fraud  which  is  perpetrated 
on  the  ultimate  buyer ;  and,  secondly,  there  is  a  fraud  perpe- 

"  Scriven  v.  North,  134  Fed.  366-  Cir.)  ;  17  L.  R.  A.  354.     See  also  to 

1904;  67  C.  C.  A.  348.  same  effect  Enoch  Morgan's  Sons  Co. 

18 Le  Page  Co.  v.  Russian  Cement  v.     Whittier-Cobum    Co.,    118    Fed. 

Co.,  51  Fed.  941-1892  (C.  C.  A.  1st  657-1892  (C.  C.  N.  D.  Cal). 


Defenses.  473 

trated  on  the  other  manufacturer,  who  loses  part  of  his  trade. 
In  this  class  of  cases  the  trade  is  seldom  deceived;  the  retail 
dealers  know  from  whom  they  are  buying,  and  if  there  is  a 
fraudulent  device  they  are  rarely  taken  in  by  it.  But  in  such 
a  case  the  manufacturer  puts  an  instrument  of  fraud  in  their 
hands.  Now  it  has  been  said  more  than  once  in  this  case,  that 
the  manufacturer  ought  not  to  be  held  liable  for  the  fraud  of 
the  ultimate  seller  —  that  is,  the  shopkeeper  or  shopkeeper's 
assistant;  but  that  is  not  the  true  view  of  the  case."19  (Up- 
held on  appeal.) 

§  254.  The  Defense  that  Defendant  was  only  the  Maker  of 
the  Label  or  Container  Complained  of,  and  was  not  Responsi- 
ble for  Its  Ultimate  Use  by  Him  for  Whom  It  was  Made. —  A 
printer,  lithographer,  or  maker  of  bottles  or  packages,  who 
furnishes  a  manufacturer  with  material  adapted  to  be  used 
by  him  in  unfair  competition,  is  himself  liable,  provided  that, 
under  the  circumstances,  he  were  chargeable  with  notice  of 
the  intended  use. 

Complainant  brought  a  suit  for  infringement  of  a  trade- 
mark, against  the  sellers  of  goods.  In  this  suit,  on  stipula- 
tion, a  decree  was  entered  establishing  complainant's  ex- 
clusive right  to  the  trade-mark  from  that  date,  but  it  was 
provided  that  neither  defendant  nor  its  customers  should  be 
liable  for  past  infringements.  Held,  that  complainant  was  pre- 
cluded from  proceeding  against  one  who  had  made  and  fur- 
nished to  the  defendant  in  the  former  suit  the  offending  car- 
tons used  by  it.  The  court  intimated  that  a  printer,  lithog- 
rapher or  maker  of  cartons  or  wrappers,  who,  with  notice, 
furnishes  to  a  manufacturer  material  adapted  to  be  used  by 
him  in  unfair  competition,  would  be  liable.20  See  §  22  for 
full  discussion  of  this  question. 

§  255.  The  Defense  that  Defendant  was  Acting  only  as 
Agent  for  Another,  and  Received  None  of  the  Profits. —  This 
fact  does  not  constitute  a  defense.  Agents  generally,  and 
officers  of  a  corporation,  may  be  made  parties  to  these  actions. 
The  fact  that  they  are  not  interested  pecuniarily  will  not 

"Lever  v.   Goodwin,  36   Ch.  Div.      &    Co.,   146   Fed.   198-1906    (C.   C. 
1-1887.  Conn.). 

M  Hillside  Chemical  Co.  v.  Ulunson 


474  Unfair  Business  Competition. 

excuse  tliern.  A  merchant  is  responsible  for  unfair  compe- 
tition by  his  employees  if  done  by  them  in  course  of  his 
business.  It  may  not  have  been  ordered  or  suggested,  in  fact, 
it  may  have  been  unknown  to  him,21  or  it  may  have  been  done 
contrary  to  his  orders.22  In  all  such  cases  the  merchant  him- 
self is  liable.  The  fact  that  the  defendant  sold  infringing 
goods  as  agent  for  a  nonresident,  is  no  reason  to  refuse  in- 
junction on  the  ground  that  he  does  not  get  the  profits.23 

§  256.  The  Defense  that  Complainant's  Title  was  not  Prop- 
erly Established. —  Defects  in  the  title,  under  which  complain- 
ant claims  his  rights,  cannot  be  availed  of  by  an  infringer, 
so  long  as  complainant  is,  at  the  time,  in  the  actual  possession 
or  use  of  the  name,  mark,  etc.  The  defendant 's  act  is  none  the 
less  unfair  because  instead  of  passing  off  his  goods  as  the  goods 
of  another  he  is  representing  some  other  man's  goods  as  his, 
or  that  he  is  brought  to  account  by  someone  whose  interest 
in  the  injured  right  is  not  clear.  This  is  a  question  between 
that  person  and  the  true  owner  of  the  right  and  does  not 
concern  him.     It  is  his  duty  to  act  fairly. 

Actual  possession  and  use  of  a  trade  name,  or  of  the  good- 
will of  a  business,  on  the  part  of  complainant,  at  the  time 
when  alleged  infringement  or  unfair  competition  begins,  is 
sufficient;  the  defendant  cannot  set  up  invalidity  in  the  trans- 
fer under  which  complainant  derived  title.  This  rule  was 
applied  where  defendant  alleged  that  the  contract  under 
which  complainant  derived  title  and  its  trade-marks,  etc., 
contained  a  provision  in  violation  of  the  anti-trust  law.24 

§  257.  The  Defense  that  the  Offense  is  Too  Trivial  for  the 
Court  to  Notice. —  To  establish  a  valid  cause  of  action  it 
must  appear  either  that  the  offense  proved,  trivial  though  it 
be,  is  evidence  of  an  intent  to  continue  to  commit  similar 
offenses  in  the  future,  or  that  it  resulted  in  real  damage  to  the 
plaintiff. 

21  Tonge  v.  Ward,  21  L.  T.  N.  S.  80  Fed.  889-1897  (2d  Cir.) ;  26  C. 
480.  C.  A.  220. 

22  Grierson  v.  Birmingham  Hotel  24  R.  T.  Reynolds  Tobacco  Co.  v. 
Co.,  18  R.  P.  C.  158.  Allen  Bros.    Tobacco   Co.,   151   Fed. 

23  Walter  Baker  &  Co.  v.  Sanders,  819-1907  (C.  C.  Va.). 


Defenses.  475 

Where  the  plaintiff  sold  "  John  Knight's  Primrose  Soap  ': 
and  "  Primrose  Soap,"  and  proved  that  on  November  24, 1903, 
defendant  company  sold  to  one  A.  H.  as  "  John  Knight's 
Primrose  Soap,"  one  bar  of  a  soap  not  made  by  plaintiff  and 
inferior  in  quality,  it  was  held,  "  the  passing  off  of  one  bar  of 
soap,  by  itself,  does  not  constitute  a  ground  of  action,  unless 
•one  of  two  other  things  are  established :  either  it  was  evidence 
of  an  intention  to  continue  so  doing,  or  that  it  occasioned  dam- 
age to  plaintiffs. ' '  23 

Again  in  Rutter  &  Co.  v.  Smith,26  where  "  there  was  a  sale 
of  one  ounce  of  tobacco,  value  unknown,  on  a  single  day,  with- 
out any  suggestion  that  anything  of  the  kind  had  occurred  be- 
fore, and  it  seemed  to  the  court  not  likely  to  occur  again,  be- 
cause the  manager  who  sold  the  tobacco  was  no  longer  in  the 
defendant's  service,"  it  was  held  too  trivial  a  case  for  injunc- 
tion, on  authority  of  Leahy,  Kelly  &  Leahy  v.  Glover?1 

§  258.  The  Defense  that  Plaintiff's  Goods  are  Worthless,  or 
Useless. —  It  is  not  a  defense  that  the  plaintiff's  goods  are 
technically  or  scientifically  worthless.  If  there  is  a  market  for 
them  they  will  not  be  considered  worthless  by  the  court.  That 
the  public  buys  them  is  sufficient  proof  of  their  merit.28 

§  259.  The  Defense  that  Defendant's  Name  is  Two  or  More 
Words  While  Plaintiff's  is  One  and  Hence  Different. —  Nor  is 
it  a  defense  to  an  unfair  use  of  a  name  that  the  defendant  uses 
it  in  two  words  instead  of  one,  as  "  Silver  Pan  "  instead  of 
"  Silverpan."  29  Differences  between  rival  names  or  makes 
must  be  reasonably  distinct. 

§  260.  The  Defense  that  Plaintiff  has  Acted  Unfairly 
Toward  Third  Persons  not  Connected  with  the  Suit  at  Bar. — 
This  is  no  defense;  such  misconduct  must  relate  to  the  subject- 
matter  of  the  action.30  But  where  the  plaintiff,  a  butter  con- 
cern, was  shown  to  have  sent  its  wrappers  to  dealers  in  low- 
grade  butter  to  use  to  put  up  inferior  butter  under  this  brand, 

25 Knight  &  Sons  v.  Crisp  &  Co.,  "Faultier  &  Co.,  Ltd.  v.  0.  <&  G. 

21  R.  P.  C.  670-1904.  Bushton,  Ltd.,  20  R.  P.  C.  477-1902. 

26 18  R.  P.  C.  49-1901.  30  S perry   &  Hutchinson  Co.  v.  L. 

"10  R,  P.  C.  141-1891.  Weber  &  Co.,  161  Fed.  219-1908  (C. 

28  Hostetter  v.  Martinoni,  110  Fed.  C.  111.). 
524. 


476  Unfair  Business  Competition. 

which  was  of  a  better  grade,  the  court  refused  relief  although 
the  plaintiff  discontinued  the  practice  two  months  prior  to 
suit.31 

§  261.  The  Defense  that  Plaintiff  is  an  Impostor  and  Delud- 
ing the  Public. —  This  defense  is  valid  if  the  plaintiff  is  de- 
ceiving and  imposing  some  fraudulent  or  worthless  article 
on  the  public  by  methods  that  are  not  open  and  bona  fide. 
Where  a  husband  and  wife  had  for  some  years  given  enter- 
tainments or  performances  under  the  name  of  "  The  Fays," 
the  principal  features  of  which  were  manifestations  of  what 
they  claimed  to  be  occult  powers,  such  as  mind  reading  and 
fortune  telling,  defendants,  former  employees,  advertised  per- 
formances of  their  own  in  such  a  manner  as  to  lead  some  of 
the  public  to  suppose  they  were  the  original  Fays.  Held,  that 
plaintiffs  were  precluded  from  equitable  relief  on  the  ground 
that  they  were  impostors,  and  were  deceiving  the  public  by 
claiming  mysterious  powers  which  they  did  not  possess.32 

§  262.  The  Defense  that  Plaintiff  is  Making  Misrepresenta- 
tions in  His  Own  Business. —  One  of  the  defenses  most  com- 
monly set  up  in  suits  for  unfair  competition,  is  that  the  com- 
plainant has  been  guilty  of  illegal  conduct  regarding  the  mat- 
ter in  question,  which  is  abhorrent  to  the  conscience  of  the 
court,  as  by  public  false  representations  as  to  his  goods,  and 
should,  therefore,  be  denied  relief  on  the  ground  that  he  does 
not  come  into  court  with  clean  hands.  "  The  principle  is  gen- 
eral, and  is  one  of  the  maxims  of  the  Court,  that  he  who  comes 
into  a  court  of  equity,  asking  its  interposition  in  his  behalf, 
must  come  with  clean  hands;  and  if  it  appears  from  the  case 
made  by  him  or  by  his  adversary,  that  he  has  himself  been 
guilty  of  unconscientious,  inequitable,  or  immoral  conduct  in 
and  about  the  same  matters  whereof  he  complains  of  his  ad- 
versary, or  if  his  claim  to  relief  grows  out  of,  or  depends  upon, 
or  is  inseparably  connected  with  his  own  prior  fraud,  he  will 
be  repelled  at  the  threshold  of  the  Court. ' ' 33 

81  Castroville   Co-op.   Creamery  Co.  M  Simmons  Medicine  Co.  v.  Mans- 

v.  Coe,  92  Pac.  648  (Cal.).  field  Drug  Co.,  93  Tenn.  84-1893;  23 

M  Fay    v.    Lambourne,    124    App.  S.  W.  165. 
Div.  245-1908  (1st  Dept.). 


Defenses.  477 

The  defense  is  peculiar  in  this ;  that  it  does  not  usually  de- 
pend upon  any  consideration  of  justice  to  the  defendant;  but 
upon  considerations  of  public  policy.  In  this  respect  it  re- 
sembles the  defense  that  a  contract  sought  to  be  enforced  is 
immoral.  "  Ex  turpi  causa  non  oritur  actio."  A  court  of 
equity  cannot  be  expected  to  protect  an  exclusive  privilege  of 
deceiving  the  public.34 

Said  Chief  Judge  Duer,  in  Fetridge  v.  Wells,35  "  If  the  sales 
made  by  the  plaintiff  and  his  firm  are  effected,  or  sought  to 
be,  by  misrepresentation  and  falsehood,  they  cannot  be 
listened  to  when  they  complain  that  by  the  fraudulent  rivalry 
of  others  their  own  fraudulent  profits  are  diminished.  An  ex- 
clusive privilege  for  deceiving  the  public  is  assuredly  not  one 
that  a  court  of  equity  can  be  required  to  aid  or  sanction.  To 
do  so  would  be  to  forfeit  its  name  and  character." 

The  misconduct  precluding  the  suitor  from  relief  most  com- 
monly consists  of  misrepresentations  to  the  public,  but  does  not 
always  take  that  form.  Equity  will  not  come  to  the  aid  of  those 
who  in  business  use  methods  tending  to  bring  opprobrium  and 
disgrace  upon  competitors.  Where  an  unincorporated  associa- 
tion of  wage-earning  cigarmakers  in  the  nature  of  a  trade 
union,  devised  and  caused  to  be  affixed  to  the  boxes  of  cigars 
made  by  its  members  a  "  Union  Label,"  certifying  that  the 
cigars  had  been  made  by  a  first-class  workman,  a  member  of  the 
cigarmakers'  union,  and  stating  it  was  "  an  organization  op- 
posed to  inferior  rat-shop,  coolie,  prison,  or  filthy  tenement- 
house  workmanship,"  etc.,  and  the  defendant  was  using  or 
about  to  use  an  imitation  of  this  label  on  cigars  not  made  by 
the  members  of  the  union,  an  injunction  was  denied,  not  only 
on  the  ground  that,  as  the  association  did  not  manufacture 
nor  sell,  it  could  not  have  a  trade-mark,  but  also  that  equity 
would  not  relieve  against  the  counterfeiting  of  such  a  label, 

"*Hobbs  v.  Francois,  19  How.  Pr.  public;  but  on  the  principle  that  it 

(N.     Y.)     567-1860.       "  The     court  will  not  interfere  to  protect  a  party 

does  not  refuse  its  aid  in  such  a  case,  in  the  use  of  trade-marks  which  are 

from   any   regard   to   the   defendant,  emploj'ed  to  deceive  the  public"  (at 

who   is   using   the   same  efforts   and  p.  571). 
misrepresentations     to     deceive     the         S5  4  Abb.  Pr.  (N.  Y.)  141-48-1857. 


478  Unfair  Business  Competition. 

since  its  purpose  was  to  injure  nonunion  members  by  covering 
them  with  oj:>probrium,  and  preventing  the  sale  of  their  work.36 

§  263.  Misrepresentation  Usually  but  not  Always  an  Affirm- 
ative Defense. —  Misrepresentation  is  here  treated  as  an 
affirmative  defense,  the  implication  being  that  the  complainant 
has  the  benefit  of  the  usual  presumption  of  innocence  and  that 
fraud  or  unconscientious  dealing  on  his  part  must  be  affirma- 
tively shown  to  establish  the  defense.  But  a  recent  federal  case 
suggests  that  sometimes,  especially  where  the  representations 
are  in  their  nature  such  as  to  excite  suspicion,  it  may  be  the 
duty  of  the  complainant  to  allege  and  prove  affirmatively  as 
part  of  his  case  the  truth  of  representations  made  to  the  pub- 
lic, as,  for  example,  respecting  the  ingredients  or  effects  of  a 
tonic  or  medicine. 

"Where  a  manufacturer  of  a  preparation  who  advertised  it 
as  of  great  medicinal  value,  various  details  being  published  as 
to  its  origin,  ingredients,  and  preparation,  both  pleads  and 
proves  in  a  suit  for  unfair  competition,  as  part  of  his  af- 
firmative case,  the  truth  of  the  representations  thus  made  to 
the  public,  he  cannot  cast  upon  the  defendant  the  burden  of 
proving  their  falsity.  He  cannot  complain  that  proving  the 
truth  of  his  representations  will  involve  the  disclosure  of  a 
secret  process.  He  should  not  publish  that  which,  if  true,  he  is 
unwilling  to  prove.37 

§  264.  The  Misrepresentation  Must  be  as  to  the  Subject- 
Matter  of  the  Suit. — We  come  now  to  consider  what  kinds  of 
misrepresentations  will  constitute  a  defense  in  a  suit  for  un- 
fair competition.  In  the  first  place,  as  is  said  in  Mossier  v. 
Jacobs,38  the  doctrine  of  unclean  hands,  "  considered  as  a  gen- 
eral rule  controlling  the  administration  of  equitable  relief  in 
particular  controversies,  is  confined  to  misconduct  in  regard  to, 
or  at  all  events  connected  with,  the  matter  in  litigation,  so  that 
it  has  in  some  measure  affected  the  equitable  relations  sub- 
sisting between  the  two  parties,  and  arising  out  of  the  trans- 
action,— it  does  not  extend  to  any  misconduct,  however  gross, 
which  is  unconnected  with  the  matter  in  litigation,  and  with 

**  McVey  v.   Brendrt,   144  Pa,    St.  "  Moxie  Nerve  Food  Co.  v.  Modox 

235-1891;  22  Atl.  912;  13  L.  R.  A.  Co.,  152  Fed  493-1907  (C.  C.  R.I.). 
377.  ™m  111.  App.  571-76-1896. 


Defenses.  479 

which  the  opposite  party  has  no  concern."  The  doctrine  of 
unclean  hands  "  does  not  repel  all  sinners  from  courts  of 
equity,  nor  does  it  disqualify  any  conrplainant  from  obtaining 
relief  there  who  has  not  dealt  unjustly  in  the  very  transaction 
concerning  which  he  complains.  The  iniquity  which  will  repel 
him  must  have  an  immediate  and  necessary  relation  to  the 
equity  for  which  he  sues."  39 

A  shirtmaker  who  sold  goods  under  the  name  "  Eureka 
Shirts  "  described  himself  as  patentee.  Defendant  began  to 
sell  shirts  by  the  same  name.  The  plaintiff's  description  of 
himself  as  patentee  was  held  no  such  misrepresentation  as  to 
debar  him  from  relief.40 

§  265.  Misrepresentations,  Discontinued  Before  Suit  is 
Brought. —  Misrepresentations  that  have  been  discontinued 
before  the  beginning  of  the  suit  cannot  usually  be  availed  of  as 
a  defense,  even  though  complainant's  trade  might  have  been 
built  up,  in  part,  by  means  of  them.  The  authorities  are  not 
fully  in  accord  as  to  this,  and  the  principle  should  be  applied 
with  caution,  after  considering  all  the  circumstances  of  the  par- 
ticular case.  In  such  matters  the  conscience  of  a  court  of 
equity  is  not  controlled  by  any  hard  and  fast  rule. 

In  Moxie  Nerve  Food  Co.  v.  Modox  Co}1  the  complainant 
made  and  sold  a  preparation,  largely  as  a  beverage,  but  also  as 
a  "  nerve  food."  Fifteen  months  before  suit  it  discontinued 
the  false  statements  which  it  had  for  many  years  been  making 
as  to  the  ingredients  of  the  preparation.  In  spite  of  the  discon- 
tinuance, its  business  had  largely  increased.  The  court  con- 
sidered that  these  earlier  misrepresentations  did  not  preclude 
relief.  "  The  defense  of  unclean  hands,  to  avail,  must  be 
based  upon  conditions  existing  at  the  time  when  the  party  ap- 
plies for  equitable  relief.  *  *  *  While  it  is  doubtless  true 
that  the  present  business  was  built  in  part  upon  misrepresenta- 
tion, this  is  not,  in  my  opinion,  a  sufficient  reason  for  denying 
relief  to  a  complainant  who  has  removed  the  objectionable  rep- 
resentations from  its  labels,  wrappers,  and  other  advertise- 

■°  Shaver   v.   Heller    &    Mers    Co.,  "  Ford  v.  Foster,  L.  R.  7  Ch.  App. 

108  Fed.  821-34-1901  (C.  C.  A.  8th      611-1872. 
Cir.)  ;  65  L.  R.  A.  878.  a  153  Fed.  487-1907  (C.  C.  R.  I ). 


480  Unfair  Business  Competition. 

ments,  and  who  has  endeavored  to  conduct  its  business, 
making  only  such  representations  as  are  considered  warranted 
by  a  substantial  amount  of  medical  opinion  "  (p.  489). 

In  Johnson  &  Johnson  v.  Seabury  &  Johnson42  the  complain- 
ant was  not  debarred  from  relief  by  the  fact  that  it  had,  some 
years  before  the  suit  was  brought,  falsely  represented  in  its 
circulars  that  it  was  exclusively  entitled  by  act  of  Congress  to 
use  certain  devices,  such  as  a  red  cross,  these  misrepresenta- 
tions having  been  discontinued  for  about  three  years.  It  is 
said  here  also  that  the  refusal  of  the  court  to  aid  one  coming 
into  court  with  unclean  hands  "  is  based  upon  the  conditions 
existing  when  the  party  applies  for  aid,"  citing  W  or  den  &  Co. 
v.  California  Fig  Syrup  Co.43  But  discontinuance  of  question- 
able acts  before  suit  will  not  always  restore  the  suitor  to  a 
position  entitling  him  to  demand  the  aid  of  a  court  of  equity.44 

§  266.  Misrepresentations  Must  be  Intentional  and  Mate- 
rial.—  To  preclude  complainant  from  relief,  his  representa- 
tions mustlte  both  intentional  and  material,  so  as  to  constitute 
a  deliberate  fraud  upon  the  public.  Allowance  will  be  made 
for  trade  exaggerations.  Inaccuracies  as  to  minor  matters  will 
be  disregarded,  and  the  tendency  is  to  construe  the  language 
used  in  a  favorable  sense.  The  question  is  as  to  the  honesty  of 
the  intention,  and  it  is  important  to  consider  what  the  actual 
effect  upon  the  public  mind  of  even  inaccurate  statements  is 
likely  to  be,  and  whether  the  public  will  really  be  misled  as  to 
any  material  point.  Misstatements,  made  in  single  instances, 
and  quickly  withdrawn,  will  not  usually  be  fatal.  They  will 
not  be  considered  false  representations  which  will  prevent  a 
complainant  from  recovering.  "  But  it  is  not  every  departure 
from  the  strict  truth  which  will  be  fatal  to  the  plaintiff's  case, 
especially  where  no  one  can  reasonably  be  misled  thereby."45 

Not  every  exaggerated  statement  will  prevent  the  plaintiff's 
recovery;  nor  is  it  necessary  that  plaintiff  should  have  delib- 
erately designed  to  deceive  if  the  statement  must  inevitably  de- 
ceive."46    This  line  of  demarkation  between  material  and 

"69  N.   J.  Eq.   696-706;   61   Atl.  45  Paul  Trade-Marks,  §  212. 

5-1905.  "Paul  Trade-Marks,  §  315. 

"102  Fed.  334-1900. 

**  Seabury       v.       Grosvenor,       14 
Blatehf.  (U.  S.)  262-1877. 


Defenses.  481 

fraudulent  misrepresentations  on  the  one  hand,  material  and 
harmless  ones  on  the  other,  will  be  better  determined  through 
comparison  of  the  cases  than  by  any  effort  to  apply  a  general 
rule. 

§  267.  Misrepresentations  as  to  Ingredients,  and  the  Nature 
and  Effect  of  a  Medical  Preparation. —  Deliberate  misrepre- 
sentations as  to  the  ingredients  of  a  food  product,  medicine 
or  the  like,  are  usually  considered  material  and  fraudulent. 
As  is  said  in  Fetridge  v.  Wells, f1  "  no  representation  can 
be  more  material  than  that  of  the  ingredients  of  a  compound 
which  is  recommended  and  sold  as  a  medicine.  There  is  none 
that  is  so  likely  to  induce  confidence  in  the  application  and 
use  of  the  compound,  and  none  that,  when  false,  will  more 
probably  be  attended  with  injurious  and  perhaps  fatal  conse- 
quences." Where  one  who  made  and  administered  the 
"  Keeley  remedies  "  for  addiction  to  liquor,  opium  and 
tobacco  advertised  conspicuously  that  gold  was  the  principal 
ingredient,  was  of  great  efficacy,  and  was  not  injurious,  and 
these  were  false  representations,  deliberately  made,  no  gold 
being  used  in  the  "  Keeley  Cure,"  it  was  held,  that  this  com- 
pany was  precluded  from  the  right  to  an  injunction  against 
a  rival  chargeable  with  unfair  competition,  and  that  although 
such  misrepresentations  were  not  pleaded  or  presented  to  the 
court,  yet  the  court  would,  of  its  own  motion,  apply  the  doc- 
trine of  "  Unclean  Hands,"  to  discourage  fraud  upon  the 
public.48 

In  a  leading  case  in  the  Supreme  Court,49  the  plaintiff  had 
spent  more  than  a  million  dollars  in  advertising  "  Syrup  of 
Figs  "  or  "  Fig  Syrup,"  as  it  was  indifferently  called  by  the 
public;  and  had  prima  facie  become  exclusively  entitled,  in 
the  first  place,  to  use  the  name  "  Syrup  of  Figs  "  or  "  Fig 
Syrup,"  regardless  of  the  form  of  bottle  or  package  in  which 
it  was  sold,  and  in  the  second  place,  to  use  the  particular 
dress  in  which  their  goods  had  been  offered  to  the  public,  and 
the  defendants  then  put  on  the  market  what  they  designated 

47  4  Abb.  Pr.  (N.  Y.)  144-51-1857.  "  Worden  v.  California  Fig  Syrup 

"Memphis     Keeley     Institute     v.  Co.,  187  U.  S.  516-1902;  47  L.  ed. 

Leslie  E.  Keeley  Co.,  155  Fed.  964-  282;  23  Sup.  Ct.  161. 

1907  (C.  C.  A.).      - 

31 


-182  Unfair  Business  Competition. 

as  "  Syrup  of  Figs  "  and  "  Fig  Syrup,"  their  wrappers  being 
a  close  imitation  of  those  of  the  plaintiff's.  The  defendant 
set  up  as  a  separate  defense,  that  the  medicine  which  was 
to  be  used  as  a  laxative  did  not  contain  figs  in  any  form,  but 
that  it  consisted  of  a  well-known  drug  called  senna,  which  has 
a  laxative  effect,  as  a  basis,  mixed  with  certain  aromatic  car- 
minatives. The  plaintiffs  alleged  that,  at  the  outset,  the  syrup 
of  figs  was  largely  used  as  one  of  the  ingredients  and  that  for 
this  reason  the  name  was  proper;  but  the  court  held,  that  this 
"  would  be  no  justification  for  continuing  the  use  of  the  term, 
after  the  manufacturers  and  vendors  of  the  medicine  ceased 
to  use  fig  juice  as  a  material  ingredient,"  and  that  "  even  if 
the  term  was  honestly  applied  in  the  first  instance,  as  descrip- 
tive, it  would  none  the  less  be  deceptive  and  misleading  when, 
as  is  shown  in  the  present  case,  it  ceased  to  be  a  truthful 
statement  of  the  nature  of  the  compound.  Nor  are  we  dis- 
posed to  concede  that,  under  the  evidence  in  the  present  case, 
the  term  '  Syrup  of  Figs  '  or  l  Fig  Syrup  '  was  properly  used 
as  descriptive  of  the  nature  of  the  medicine  when  it  was  first 
made.  Then,  as  now,  the  operative  laxative  element  was 
senna,  and  the  addition  of  fig  juice  was,  at  the  best,  experi- 
mental, and  apparently  was  intended  to  attract  the  patronage 
of  the  public  by  holding  out  the  name  of  the  medicine  as 
'  Syrup  of  Figs  '  "  (id.  p.  537).  For  these  reasons  it  was 
held,  that  the  mark  and  names  used  were  so  plainly  deceptive 
as  to  deprive  the  plaintiff  company  of  the  right  to  an  injunc- 
tion by  a  court  of  equity. 

This  decision  of  the  Supreme  Court  confirmed  the  decisions 
in  two  earlier  cases  in  the  federal  courts,  involving  the  same 
facts.50 

K  California     Fig    Syrup     Co.    v.  v.    Gross,    25    Mo.    App.    123-1887; 

Putnam,    66    Fed.    750-1895    (C.    C.  Prince  Mfg.   Co.  v.  Prince  Metallic 

Mass.) ;  California  Fig  Syrup  Co.  v.  Paint  Co.,  135  N.  Y.  24-1892;  31  N. 

Stearns  &  Co.,  73  Fed.  812-1896  (C.  E.  990;  17  L.  R.  A.  129  note;  Pid- 

C.  A.  6th  Cir.) ;  33  L.  R,  A.  56.    See  ding    v.    How,    8    Sim.    477-1837; 

also  Fetridge  v.    Wells,  4   Abb.   Pr.  Leather     Cloth     Co.     v.     American 

(N~.  Y.)  144-1857.    The  court  founds  Leather    Cloth    Co.,    11    H.    L.    Cas. 

its  decision  on  these  cases:     Cnnnell  523-1865;     Fetridge     v.     Welh,     13 

v.  Reed,  128  Mass.  477-1880;  Siegert  How.  Pr.   (N.  Y.)    (385-1857;  Man- 

v.  Abbott,  61  Md.  276-1883;   Alden  hattan   Medicine   Co.    v.    Wood,   108 


Defenses.  483 

A  representation  as  to  the  ingredients,  composition,  or 
origin  of  the  product  should,  in  order  to  disentitle  to  relief, 
be  clear  and  direct,  and  not  depend  merely  upon  doubtful 
inference  or  construction.  Mere  suggestiveness  in  the  form 
of  a  name  is  rarely  enough.  For  example,  the  use  of  the 
word  ' '  Alpenkrauter  "  as  the  name  of  a  medicine  should  not 
be  treated  as  holding  out  to  the  public  that  the  medicine  is 
made  from  herbs  grown  on  the  Alps ;  the  inference  is  too  un- 
certain.51 

An  owner  of  a  recipe  for  making  a  certain  cosmetic  sold 
it  under  the  name  of  "  The  Balm  of  a  Thousand  Flowers." 
The  defendants  commenced  to  sell  a  similar  article,  calling  it 
"  The  Balm  of  Ten  Thousand  Flowers."  A  'temporary  in- 
junction was  granted,  but  afterward,  upon  the  coming  in  of 
proofs,  it  was  dissolved.  It  appeared  that  the  main  ingre- 
dients of  the  compound  were  oil,  ashes,  and  alcohol,  and  not 
an  extract  or  distillation  from  flowers.  Instead  of  being  a 
balm,  the  compound  was  a  soap.  It  was  evident,  said  the 
court,  that  the  name  was  given  to  it  and  used  to  deceive  the 
public,  to  attract  and  impose  upon  the  purchasers,  and  the 
plaintiff  was  held  to  be  entitled  to  no  relief.52 

In  Wolfe  v.  Burke,53  the  defendant  sold  Holland  gin  under  a 
title  including  the  word  "  Schnapps,"  describing  it  as  a 
"  superlative  tonic  diuretic,  anti-dyspeptic,  and  invigorating 
cordial,"  while  plaintiff  also  sold  Holland  gin  under  a  title 
of  which  the  word  "  Schnapps  "  was  part,  describing  it  as 
"  an  invigorating  tonic  and  medicinal  beverage,"  and  assert- 
ing that  it  "  had  no  equal  "  as  a  remedy  for  various  diseases. 
Its  real  name  and  nature  were  not  indicated.  The  court  was 
of  the  opinion  that  the  word  "  Schnapps,"  whatever  may  be 
its  signification  in  the  country  from  which  it  was  imported,, 
was  not  generally  known  to  mean  gin  in  this  country,  and 
therefore  held,  that  the  representations  of  the  parties  as  to 
the  name  of  the  article  were  calculated  to  deceive,  and  said 

U.    S.    21S-1SS2;   27   L.    ed.    706;   2  "Dr.   Peter   H.   Fahrney    &   Sons 

Sup.  Ct.  436;  Cloworthy  v.  Schepp,  Co.  v.  Ruminer,  153  Fed.  735-1907. 

42  Fed.  62-1890  (C.  C.  S.  D.  N.  Y.)  ;  "  Fetridge   v.    Wells,   4   Abb.    (N. 

Krauss  v.  Peebles'  Sons  Co.,  58  Fed.  Y.)  144-1857. 

585-1893  (C.  C.  Ohio).  0356  N.  Y.  115-1874. 


484 


Unfair  Business  Competition. 


that,  while  the  gin,  properly  prescribed  and  taken,  probably 
did  possess  some  medicinal  properties,  yet  "  to  palm  off  this 
or  any  other  liquor  in  common  use  exclusively  as  a  medicine 
and  a  specific  for  certain  diseases,  under  names  not  generally 
understood  by  the  community,  is  a  species  of  fraud  which  a 
court  of  equity  should  not  be  called  upon  to  protect  "  (p.  123). 5* 

Selling  a  prepared  food  described  as  "  Fruit  Puddine  "  or 
"  pudding,"  when  there  was  in  fact  no  fruit  in  the  prepara- 
tion, was  held  a  misrepresentation  sufficient  to  justify  the 
refusal  of  a  preliminary  injunction.55 

A  statement  on  a  label  that  a  whiskey  is  "  pure  Pepper 
whiskey  "  when  it  is  35  per  cent,  other  whiskey  is  misrepre- 
sentation which  will  bar  recovery  in  equity.  The  public  are 
entitled  to  an  accurate  statement  as  to  the  source  and  ingre- 
dients of  goods,  if  any  statement  is  made.  "  To  bottle  such 
a  mixture,  and  sell  it  under  the  trade  label  and  caution  notices 


MPidding  v.  Hoiv,  8  Sim.  477- 
1837.  Plaintiff  made  a  new  mixture 
of  tea  which  he  called  "  Howqua's 
Mixture."  He  made  false  state- 
ments as  to  the  teas  of  which  his 
mixture  was  composed  and  as  to  the 
mode  in  which  they  were  procured. 
Held,  that  courts  of  equity  will  not 
extend  their  protection  to  one  whose 
case  is  not  founded  in  truth.  Perry 
v.  Truefitt,  6  Beav.  66-1842.  One 
Leathart  had  invented  a  mixture  for 
the  hair,  the  secret  and  recipe  for 
mixing  which  he  had  transferred  to 
the  plaintiff,  a  hairdresser  and  per- 
fumer, who  gave  to  the  composition 
the  name  of  "  Medicated  Mexican 
Balm,"  and  sold  it  as  "  Perry's  Medi- 
cated Mexican  Balm."  The  defend- 
ant, a  rival  hairdresser  and  perfumer, 
commenced  selling  a  composition 
similar  to  that  of  plaintiff,  in  bot- 
tles with  labels  closely  resembling 
those  used  by  him.  He  designated 
his  composition  and  sold  it  as  "  True- 
fitt's     Medicated     Mexican     Balm." 


The  plaintiff  thereupon  filed  his  bill, 
alleging  that  the  name  or  designa- 
tion of  "  Medicated  Mexican  Balm  " 
had  become  of  great  value  to  him  as 
his  trade-mark,  and  seeking  to  re- 
strain defendant  from  its  use.  The 
plaintiff,  in  his  advertisements  to  the 
public,  falsely  set  forth  that  the 
composition  was  a  "  highly  concen- 
trated extract  from  vegetable  bal- 
samic productions  "  of  Mexico,  and 
was  prepared  from  "  an  original 
recipe  of  the  learned  J.  F.  Von 
Blumenbach,  and  was  recently  pre- 
sented to  the  proprietor  by  a  very 
near  relation  of  that  illustrious 
physiologist;"  and  the  court  refused 
the  injunction,  Lord  Langdale,  M. 
R.,  holding  that,  in  the  face  of  such 
a  misrepresentation,  the  court  would 
not  interpose  in  the  first  instance, 
citing  with  approval  Pidding  v.  How, 
8  Sim.  477-1837. 

85  Clotworthy   v.    Schepp,   42   Fed. 
62-1890  (C.  C.  N.  Y.). 


Defenses.  485 

above  referred  to,  is  a  false  representation,  and  a  fraud  upon 
the  purchasing  public.  A  court  of  equity  cannot  protect 
property  in  a  trade-mark  thus  fraudulently  used.  It  is  not 
material  whether  foreign  whiskey  mixed  with  Pepper's  is 
as  good  or  better  whiskey  than  Pepper's  or  whether  the  mix- 
ture is  better  than  pure  Pepper  whiskey.  The  public  are 
entitled  to  a  true  statement  as  to  the  origin  of  the  whiskey, 
if  any  statement  is  made  at  all.  The  complainants  and  Pep- 
per are  not  to  be  protected  in  a  deception  of  the  public,  even 
if  it  works  to  the  advantage  of  the  public."50  Selling 
whiskey  as  "  Eye  Whiskey,"  "  Fine  Old  Whiskey,"  and 
"  V.  0.  S.,"  used  in  the  trade  for  "  Very  Old  Stock,"  when 
the  whiskey  "  fell  far  short  of  what  the  label  and  lettering 
would  indicate,"  and  "  the  bottles  were  so  labeled  and  let- 
tered to  induce  the  public  to  believe  that  they  were  getting  a 
quality  of  whiskey  far  superior  to  what  they  actually  bought," 
is  misrepresentation.537 

The  fact  that  the  preparation  about  which  the  misrepre- 
sentation is  made  is  harmless  will  not  cure  such  misrepresen- 
tation. In  Phalon  &  Son  v.  Wright 58  the  plaintiffs  made  a 
perfume  called  "  Extract  of  Night  Blooming  Cereus,"  stating 
expressly  that  it  was  distilled  from  that  flower.  In  reality 
it  was  not  made  from  any  flower,  but  was  an  alcoholic  com- 
pound. Held,  that,  even  if  the  deception  were  harmless  in 
its  effect,  it  was  not  to  be  disregarded,  and  would  debar  the 
party  making  it  from  equitable  relief. 

The  fact  that  a  preparation  does  not  contain  an  ingredient 
which  is  mentioned  in  its  name  will  bar  recovery ;  thus  a  pre- 
liminary injunction  against  the  use  of  the  words  "  Bromide 
Quinine  "  will  not  be  vacated  on  the  petition  of  the  proprietor 
of  "  Bromo-Quinine,"  when  the  word  "  Bromo  "  was  used 
by  him  to  make  the  public  suppose  that  bromide  was  a  leading 

""Krauss  v.  Jos.  R.  Peebles'  Soyis  Medicine  Co.  v.  TF.  II.  Hill  Co.,  102 

Co.,    58    Fed.    585-9-1-1893    (C.    C.  Fed.  14S-1900   (C.  C.  A.  6th  Cir); 

Ohio).  Moxie    Nerve    Food    Co.    v.    Modox 

67  J.   W.  Epperson  &   Co.  v.  Blu  Co.,  152  Fed.  493-1907  (C.  C.  R.  I.). 

menthal,     (Ala.)     42     So.    803-1906.  58  5  Phila.  464-1864. 
Other     federal     cases     are:       Paris 


48G  Unfair  Business  Competition. 

ingredient  of  "  Broino-Quinine,"  whereas  the  preparation  con- 
tained no  bromide.59 

Representations  that  a  remedy  is  made  from  an  herb  dis- 
covered in  Bolivia  by  a  person,  when,  in  all  likelihood,  neither 
the  person  nor  the  herb  ever  had  any  existence,  will  be 
condemned.  The  manufacturer  of  "  Moxie  "  advertised  it  not 
only  as  a  refreshing  beverage,  but  also  as  "  Nerve  Food," 
the  chief  ingredient  being  described  as  a  Bolivian  herb  of 
great  efficacy,  discovered  by  Lieutenant  Moxie,  and  as  having 
medicinal  value,  especially  for  nervous  diseases.  Defendant's 
evidence  made  it  extremely  doubtful  whether  either  Lieu- 
tenant Moxie  or  the  Bolivian  herb  had  ever  existed,  and  tended 
to  show  that  the  preparation  contained  no  tonic  or  medicinal 
ingredient  other  than  a  small  amount  of  bitters,  and  could  not 
have  any  marked  curative  effect.  By  these  statements  the  com- 
plainant forfeited  any  right  to  relief,  on  the  ground  of  its  mis- 
representations.00 

Merchants  in  Great  Britain  who  sold  liver  pills  which  they 
called  "  Charles  Forde's  Bile  Beans  for  Biliousness,"  adver- 
tising that  their  "  beans  "  were  based  upon  an  Australian 
herb,  discovered  by  an  eminent  scientist  named  Charles 
Forde,  whereas  these  statements  were  wholly  false,  were  de- 
nied relief  by  the  Scottish  court  when  a  rival  began  to  sell 
liver  pills  under  the  name  of  "  Davidson's  Bile  Beans,"  the 
general  get-up  of  his  packages  differing  considerably  from 
those  of  complainant's.61 

§  268.  Misrepresentations  Must  be  as  to  Ingredients  that 
are  Essential. — A  misrepresentation  to  avail  the  defendant 
must  be  as  to  material  facts.  The  fact  that  beer  claimed  to 
be  made  of  Saazer  hops  and  imported  barley  was  made  in  part 
of  other  hops  equally  good,  and  of  American  barley  equal  in 
quality  to  the  imported,  are  not  fatal.  These  were  termed 
by  the  court  distinctions  without  a  difference.62  It  is  an 
immaterial  misrepresentation  to  say  that  a  whiskey  is  pure 

89  Paris  Medicine  Co.  v.  ir   H.  Hilf  n  Bile  Bean  Mfg.  Co.  v.  Davidson, 

Co.,  102   Fed.   148-1900    (C.    C.   A.  22  R.  P.  C.  553-1905   (Ct.  Sess.). 

6th  Cir.).  *~  Conrad  v.  TJhrig  Brewing  Co.,  8 

e0  Moxie  Nerve  Food  Co.  v.  Modox  Mo.  App.  277-1880. 
Co.,  152  Fed.  493-1907  (C.  C.  R.  I.). 


Defenses.  487 

when  it  contains  a  small  portion  of  water.  The  word  means 
pure  in  the  commercial  sense.63 

§  269.  Extravagant  Claims  as  to  Efficacy  of  Medicines. — 
Extravagant  claims  as  to  the  efficacy  of  a  proprietary  medi- 
cine in  curing  many  forms  of  disease  will  not  ordinarily  de- 
prive the  manufacturer  of  relief  in  an  action  for  unfair 
competition,  as  the  medicinal  value  of  such  a  preparation  is 
rather  a  matter  of  opinion  than  of  fact.64    See  §  276. 

In  Siegert  v.  Gandolfi05  the  court,  on  appeal,  showed  a  dispo- 
sition to  apply  a  liberal  construction  to  expressions  contained 
in  advertisements.  There  was  a  statement  that  the  bitters  con- 
tained no  intoxicating  ingredient,  but  this  was  accompanied 
by  another  statement  that  they  consisted  of  "  a  mixture  of 
certain  bitter  aromatic  and  carminative  substances,  together 
with  alcohol,  added  as  a  preservative  and  solvent."  These 
statements  were  regarded  as  consisting  partly  of  extravagant 
laudations,  partly  of  statements  for  which  there  appeared  to 
be  some  basis  in  medical  opinion,  and  partly  of  statements 
susceptible  of  a  favorable  construction  when  read  with  other 
statements,  hence  not  such  fraudulent  misstatements  as  to  sup- 
port the  defense  of  "  unclean  hands."  Another  illustration  of 
the  apparently  growing  tendency  toward  lenient  construction 
of  language  used  in  advertising  is  found  in  Schuster  Co.  v. 
Mullen™  where  the  contention  that  the  labels  on  certain  bottles 
of  bitters  were  deceptive  was  overruled,  the  evidence  being 
that  the  bitters  would  not  have  all  the  effects  on  the  kidneys 
claimed  for  them,  but  that  they  would  be  beneficial  for  some 
purposes,  and  were  good  bitters,  though  containing  too  much 
alcohol  for  children.6,7 

§  270.  Misrepresentations  as  to  Manufacture,  Place  of 
Manufacture,  Origin  of  Goods,  Etc. —  In  general,  represen- 
tations that  the  product  is  manufactured  at  a  particular  place 

63  Cahn    v.     Gottsclialk,    14    Daly  Fed.  572,  are  no  longer  authority,  or 

(N.  Y.)  542-1888;  2  N.  Y.  Supp.  13.  at  all  events  are  to  be  applied  with 

84  Samuel  Bros.  &  Co.  v.  Hostetter  great  caution. 

Co.,  55  C.  C.  A.  Ill;  118  Fed.  257;  65 149  Fed.  100-1906. 

Moxie   Nerve  Food   Co.   v.  Holland,  6628  App.  Cas.   (D.  C.)   409-1906. 

141  Fed.  202.    These  later  cases  show  67  Newbro    v.    Undcland,   69    Nebr. 

that  the  cases  cited  in  Kohler  Mfg.  821-1903;  96  N.  W.  635. 
Co.  v.  Beeshore,  8  C.  C.  A.  215;  59 


488  Unfair  Business  Competition. 

or  by  particular  manufacturers  are  material.  "A  court  of 
equity  will  extend  no  aid  to  sustain  a  claim  to  a  trade-mark  of 
an  article  which  is  put  forth  with  a  misrepresentation  to  the 
public  as  to  the  manufacturer  of  the  article,  and  as  to  the  place 
where  it  is  manufactured,  both  of  which  particulars  were  origi- 
nally circumstances  to  guide  the  purchaser,"  according  to  the 
Supreme  Court  of  the  United  States  in  Manhattan  Medicine 
Co.  v.  Wood.GS  In  that  case  the  maker  of  "  Atwood 's  Vegetable 
Physical  Jaundice  Bitters,"  claimed,  as  successor  of  the 
founder  of  the  business,  Moses  Atwood,  of  Georgetown,  Massa- 
chusetts, to  be  entitled  to  the  old  trade-marks,  names,  and 
labels  of  the  concern.  Complainant's  labels,  however,  de- 
scribed the  medicine  as  manufactured  by  Moses  Atwood  at 
Georgetown,  Massachusetts,  although  it  was  now  manufactured 
at  New  York,  and  by  complainant. 

The  court  said :  ' '  These  statements  were  deemed  important 
in  promoting  the  use  of  the  article  and  its  sale,  or  they  would 
not  have  been  continued  by  the  assignees  of  the  original  in- 
ventor. And  yet  they  could  not  be  used  with  any  honest  pur- 
pose, when  both  statements  had  ceased  to  be  true.  It  is  not 
honest  to  state  that  a  medicine  is  manufactured  by  Moses 
Atwood,  of  Georgetown,  Massachusetts,  when  it  is  manufac- 
tured by  the  Manhattan  Medicine  Company  in  the  City  of  New 
York."  Where  a  trade-mark  is  attached  to  a  product,  the 
reputation  of  which  is  based  upon  superior  material  and 
processes,  and  special  care  and  skill  exercised  by  the  originator 
of  the  mark,  an  assignee  of  such  a  business  as,  for  example,  the 
canning  of  salmon,  who  continues  to  use  labels  falsely,  and 
states  that  the  goods  are  prepared  by  the  originator,  is  not 
entitled  to  relief  against  an  infringer/'1*  Doubt  was  expressed 
whether  a  geographical  term,  such  as  "  East  Indian,"  was 
capable  of  exclusive  appropriation,  but  the  dismissal  of  the  bill 
was  placed  on  the  ground  that  plaintiffs  were  defrauding  the 
public  by  using  these  words  "  to  denote  and  to  indicate  to  the 
public  that  the  medicines  were  used  in  the  East  Indies,  and 
that  the  formula  for  them  was  obtained  there,  neither  of  which 

68 108  U.  S.  218-1882;  27  L.  ed.  Improvement  Co.,  60  Fed.  103-1904 
706;  2  Sup.  Ct.  436.  (C.  C.  N.  D.  Cal.). 

s°  Alaska  Packers'  Assn.  v.  Alaska 


Defenses. 


489 


is  the  fact."70  A  statement  on  a  label  that  goods  were  made 
at  A.,  when  they  were  made  at  T.,  may  not  amount  to  a  mis- 
representation, but  if  so  made  as  to  imply  that  they  were 
made  by  the  original  maker  at  T.,  when  such  was  not  the  fact, 
that  will  prevent  recovery.71  Lord  Westbury,  as  Chancellor, 
held  that  a  false  statement  that  goods  were  made  by  an  Ameri- 
can firm  and  in  part  at  a  place  in  America,  would  bar  relief72 
A  cigarmaker,  who  sought  an  injunction  restraining  defend- 
ant, a  printer  of  cigar  labels,  from  imitating  his  labels,  was 
held  to  have  forfeited  his  right  to  relief  by  representing 
his  cigars,  which  were  made  in  New  York  city,  to  be  from  a 
particular  plantation  in  Havana.  The  fact  that  the  untrue 
statement  was  in  a  foreign  language  was  regarded  as  making 
no  difference.  "  It  is  enough,"  says  the  court,  "  that  it  is  a 
misrepresentation,  calculated  to  have  that  effect  upon  the  un- 
wary and  unsuspicious.73  Again,  where  the  word  "  Habana  " 
was  conspicuously  printed  on  the  cigar  label,  while  only  the 
filler  was  of  Havana  tobacco,  this  use  of  the  word  constituted  a 
material  misrepresentation  to  the  purchasing  public,  although 
the  trade  were  not  misled.74  And  in  Newman  v.  Pinto™  a 
plaintiff  was  debarred  from  relief  by  the  fact  that  his  boxes, 


70  Connell  v.  Reed,  128  Mass.  477- 
1880. 

71  Siegert  v.  Abbott,  61  Md.  276- 
18S3.  Plaintiff's  bitters  were  de- 
scribed on  the  label  as  "Aromatic 
Bitters  or  Angostura  Bitters,  pre- 
pared by  Dr.  Siegert,  at  Angostura, 
now  Port  of  Spain,  Trinidad."  Dr. 
Siegert  had  been  dead  for  some 
years,  and  the  factory  had  been  re- 
moved to  Port  of  Spain.  The  court 
says  that  it  was  true  that  a  removal 
from  Angostura  to  Port  of  Spain  is 
noted  on  the  label;  but  it  is  so  noted 
as  to  leave  the  impression  that  Dr. 
Siegert,  the  inventor  and  original 
manufacturer,  had  so  removed  and 
was  continuing  his  manufacture  at 
Port  of  Spain.  This  was  held  to  be 
such  misrepresentation  as  to  pre- 
clude relief. 


72  Leather  Cloth  Co.,  Ltd.  v. 
American  Leather  Cloth  Co.,  Ltd.,  4 
De  G.  J.  &  S.  137;  affirmed  in  11 
H.  L.  Cas.  523-1865. 

73  Palmer  v.  Harris,  60  Pa.  St. 
156-1869;  Sherwood  v.  Andrews,  5 
Am.  L.  R.  N.  S.  588-1866;  Symonds 
v.  J  ones,  82  Me.  302-1890;  Hege- 
man  v.  liegeman,  8  Daly  (N.  Y.) 
1880;  Stachelberg  v.  Ponce,  23  Fed. 
430,  1885;  Dixon  Crucible  Co.  v. 
Guggenheim,  2  Brewst.  (Pa.)  321- 
1869 ;  Jennings  v.  Johnson,  39  Fed. 
304-1888 ;  Feder  v.  Benkert,  70  Fed. 
613  (C.  C.  A.  9th  Cir.);  Felt  on  v. 
Sellers  Co.,  4  Brewst.  (Pa.)  42-1867 
(Sup.  Ct.  Pa.). 

74  Solie  Cigar  Co.  v.  Pozo,  16  Colo. 
388-1891 ;  26  Pac.  556. 

"4  R.  P.  C.  508-1887  (Ct.  App.). 


490  Unfair  Business  Competition. 

taken  as  a  whole,  conveyed  the  misrepresentation  that  his 
cigars  were  made  in  Havana,  this  not  being  the  fact.  The  fact 
that  the  plaintiff  represented  that  his  powder  was  made  by  a 
London  concern  and  was  nsed  by  the  Queen,  when  actually 
it  was  made  in  New  York,  debarred  him  from  relief.76 
Uri  v.  Hirsch77  was  a  suit  for  infringement  of  a  trade-mark 
for  whiskey.  The  use  of  a  trade-mark  which  represented  that 
whiskey  was  made  in  Nelson  county,  Ky.,  and  was  "  Old  Style 
Nelson  County  Pure  Eye,"  etc.,  when  the  whiskey  was  not 
made  by  him,  but  purchased  from  rectifiers,  and  was  not  made 
in  Kentucky,  and  was  not  a  pure  rye  but  blended,  amounted 
to  misrepresentations  which  deprived  the  user  of  the  label  of 
the  right  to  equitable  relief. 

§  271.  Misrepresentation  as  to  Maker  of  Goods. —  The  Ohio 
court  has  gone  to  the  extent  of  holding  that  one  who  represents 
that  he  is  the  maker  of  a  medicine  by  a  formula  of  his  own, 
when  actually  it  is  made  by  the  formula  of  another  person  alto- 
gether, deceives  the  public  and  should  be  precluded  from  relief 
if  he  asks  that  his  own  name,  as  applied  to  the  medicine  and 
formula,  be  protected.  In  Buckland  v.  Ricers  complainants 
used  the  name  "  Trommer  "  as  a  name  for  their  extract  of 
malt,  and  included  in  their  advertisements  excerpts  from 
standard  medical  books  commending  Trommer 's  preparation. 
Complainants'  extract  was  really  prepared  by  one  Gessner, 
according  to  a  formula  of  his  own,  and  not  according  to  any 
formula  or  method  of  Trommer.  Held,  that  this  was  an  at- 
tempt to  deceive  the  public,  such  as  would  preclude  relief 
against  an  infringer,  so  far  as  concerned  the  use  of  the  name 
"  Trommer."  But  a  real  or  apparent  inaccuracy  of  statement 
as  to  the  origin  of  goods  or  their  place  of  manufacture  has  not 
been  deemed  fatal  to  complainant's  standing  in  a  court  of 
equity  in  some  cases.  Sometimes,  for  example,  the  complain- 
ant, describing  himself  as  the  manufacturer,  does  not  in  fact 
directly  manufacture,  but  the  goods  are  made  by  others  pur- 

™Hobbs  v.  Francais,  19  How.  Pr.  79  40  Ohio  St.  526-1884.     See  also 

(N.    Y.)    567-1860     (N.    Y.    Super.       Wolfe    v.    Burnett    dt    Lion,   24   La. 
Cfc).  Am1-  97-1872. 

"123  Fed.  56S-1903  (C.  C.  W.  D. 
Mo.). 


Defenses.  491 

suant  to  his  orders  or  under  his  direction.  In  such  a  case  he  is 
hardly  to  be  charged  with  fraud  toward  the  public.79  A  person 
is  not  guilty  of  misrepresentation  even  though  he  states  he  is 
the  "  sole  maker  "  of  an  article,  when  the  fact  was  that  he  did 
not  make  the  article  at  all,  it  being  made  by  others  espe- 
cially for  him.80 

§  272.  Continuing  Use  of  Name  of  Predecessor. —  There  are 
cases  in  which  the  continued  use  of  the  name  of  a  predecessor 
in  the  business  as  that  of  the  manufacturer,  after  he  had  died 
or  transferred  his  interest,  has  been  held  to  be  legitimate,  or, 
at  least,  not  fatal  to  the  right  to  relief;  for  instance,  in 
Jennings  v.  Johnson81  the  plaintiff,  whose  name  was  Jennings 
and  who  was  successor  to  I.  S.  Johnson  &  Co.,  had  a  right, 
it  was  held,  to  represent  on  the  label  that  the  liniment 
was  prepared  by  I.  S.  Johnson  &  Co.,  it  being  common 
in  such  cases  to  retain  the  old  name.  Somewhat  analogous 
was  the  Benedictine  case,  in  which,  however,  there  was  no 
express  statement  as  to  who  were  manufacturing  the  cordial. 
The  complainant,  a  French  corporation,  manufactured  at  Fe- 
camp, in  Normandy,  the  "  Benedictine  "  cordial  according  to 
the  secret  recipe  formerly  used  by  the  Benedictine  monks  of  the 
Abbey  of  Fecamp.  It  was  sought  to  enjoin  defendant  from 
selling  as  "  Benedictine,"  under  labels  and  wrappers  so  pre- 
cisely similar  as  to  be  indistinguishable  from  complainants' 

70  Wormser    v.     Shayne,     111     111.  defendant  from  fraudulent  imitation 

App.  556-1904,  infra;  Regent  Shoe  of  their  goods   in  respect  to   trade- 

Mfg.   Co.  v.  Haaker,  75  Nebr.  426;  mark,     label,     and     appearance     of 

106  N.  W.  595-1906.     The  fact  that  package.     Plaintiffs'   label   bore   the 

defendants  advertised  the  shoes  sold  words     "  Gluckman     &     Son,     Sole 

by    them    as    made    by    themselves,  Manufacturers,     Paris ; "     they    had 

whereas  they  were  in   fact  made  by  no   factory   or   place   of  business  in 

others  (though  as  defendants  claimed  Paris,  but  the  cigarette  papers  were 

under  their   special   direction),   held  manufactured    there    especially     for 

not  to  be  such  a  material  and  fraud-  them,  with  their  name  on  the  water- 

ulent    misrepresentation    as    to    pre-  mark.     Held,  that  the  statement  on 

elude  them  from  the  relief  demanded  the    label   was    substantially,    though 

in  their  cross-bill.  not   exactly,   true,   and   did  not   con- 

80  Gluckman    v.    Strauch,   99    App.  stitute    a    false    representation    of    a 

Div.    (N.   Y.)    361-1904;    91   N.   Y.  material  fact  so  as  to  disentitle  them 

Supp.  223.     Plaintiffs  who  dealt  in  to  relief, 
cigarette  papers -sought  to  enjoin  the  81  37  Fed.  364-1888  (C.  C.  Me.). 


492  Unfair  Business  Competition. 

product,  a  cordial  made  by  it,  at  St.  Louis,  Mo.  The  defense 
was  that  complainants'  label  was  untruthful.  Held,  that  the 
words  "  Genuine  Benedictine  Liquor  of  the  Benedictine  Monks 
of  the  Abbey  of  Fecamp  "  did  not  import  that  the  cordial 
was  still  actually  made  by  the  monks,  but  that  it  was  made 
according  to  their  formula,  and  that  there  was,  therefore,  no 
misrepresentation.82 

The  plaintiff  company  published  the  "  G ruber  Almanack," 
"  J.  Gruber"s  Hagerstown  Almanac,"  which  had  been  issued 
since  1835  by  John  Gruber,  and  after  his  death  by  his  suc- 
cessors. John  Gruber  was  the  ancestor  of  all  but  one  of  the 
plaintiffs,  and  the  almanac  continued  to  be  published  for  the 
benefit  of  his  family.  Defendants  put  upon  the  market  an 
almanac  of  very  similar  name,  which  resembled  plaintiffs' 
closely  in  general  appearance,  but  set  up  in  defense  to  a  suit 
for  an  injunction  that  plaintiffs  were  guilty  of  false  repre- 
sentations, such  as  advertising  their  almanac  as  "  printed  by 
John  Gruber,"  the  almanac  containing  also  a  notice,  signed 
"  John  Gruber,"  authorizing  plaintiff  corporation  to  publish 
the  almanac.  Held,  that  the  alleged  misrepresentations  were 
not  such  as  to  deceive  the  public,  and  were  immaterial.83 

§  273.  Misrepresentation  as  to  Unessential  Details. —  The 
tendency  is  toward  liberality  in  construing  the  wording  of 
labels.  The  courts  are  disposed  to  apply  the  rule  de 
■minim is  non  curat  lex,  and  disregard  misstatements  as  to  non- 
essential details  which  are  not  likely  to  have  any  material 
effect  upon  the  mind  of  the  public.84  Misrepresentation  as  to 
details,  where  there  is  no  fraudulent  intention  and  where  the 
use  of  the  words  may  be  explained  in  any  reasonable  sense 
consistent  with  honesty,  will  not  preclude  relief  against  un- 
fair competition.      Describing  goods  as  "  imported,"  when 

"  Societe  Anonyme,  etc.  v.  Western  tured  by  them  at  Lowell  as  "  Hoyt's 

Distilling  Co.,  43  Fed.  416-1890   (C.  German  Cologne,"  but  did  not  repre- 

C.  E.  D.  Mo.).  sent  it  to  be  made  in  Germany,  and 

83  Gruber  Almanack  Co.  v.  Swing-  placed  their  name  and  place  of  busi- 
ley,  103  Md.  362;  63  Atl.  684-1906.  ness    conspicuously    on     the    labels. 

84  Hoyt  v.  Hoyt,  143  Pa.  St.  623-  Held,  that  there  was  no  implied  mis- 
1891;  22  Atl.  755;  13  L.  R.  A.  343.  representation  as  to  place  of  manu- 
Plaintiffs  sold  the  cologne  manufac-  facture. 


Defenses.  493 

that  is  not  the  fact,  or  describing  one's  self  as  "  sole  agent," 
although  one  is  the  principal,  are  not  fraudulent  misrepre- 
sentations.85 In  Clark  Thread  Co.  v.  Armitage,86  it  appeared 
that  in  the  four  years  preceding  his  suit,  complainant  had 
sent  to  an  agent  thirty-one  dozen  boxes,  marked  "  J.  &  J. 
Clark  &  Co.,  Paisley,"  a  trade-mark  purchased  by  them  from 
a  Scottish  firm.  Defendant  contended  this  was  material  mis- 
representation, as  the  thread  was  not  made  in  Paisley.  The 
court  considered  that  the  amount  of  the  sales  of  those  so 
marked  was  too  insignificant  to  bar  relief.  Wormser  for 
eight  years  sold  "  Model  Hats  "  at  $1  each,  and  advertised 
them  by  putting  a  $1  bill  on  each  hat  in  his  window.  Shayne 
took  up  the  hat  business  in  store  next  door,  put  up  the  sign 
"  The  Medal  One  Dollar  Hats,"  and  "  The  Medal,"  and  put 
dollar  bills  on  his  hats  in  his  windows.  Shayne  set  up  as  an 
affirmative  defense  that  the  statement  advertised  by  Wormser 
that  he  made  all  his  hats,  was  manufacturer,  jobber,  and 
retailer,  and  hence  was  able  to  sell  for  a  dollar  was  untrue. 
In  reality  his  hats  were  made  by  another  house  in  Massachu- 
setts. Held,  that  the  representation  that  he  was  the  manufac- 
turer could  not  under  the  circumstances  defraud  his  customers 
or  the  public.  That  the  fact  that  "Wormser  had  but  seven 
stores  and  advertised  he  had  ten  did  not  preclude  him  from 
relief;  that  a  misrepresentation  must  be  material  to  preclude 
the  relief  prayed.87 

It  is  not  dishonest  conduct  to  sell,  under  the  name  "  Port- 
land," a  stove  resembling  in  style  and  structure  a  lower- 
priced  stove  known  on  the  market  as  the  "  Canopy,"  though 
differing  from  it  in  certain  details.  As  long  as  there  was  no 
other  "  Portland  "  stove  it  was  considered  that  even  if  this 

85  Funke  v.  Dreyfus  &  Co.,  34  La.  lars,  advertised  that  they  manufac- 
Ann.  80-1882.  tured   their    own    goods    and    had    a 

86  74  Fed.  936-1896  (C.  C.  A.  2d  factory  at  Belfast  and  Londonderry. 
Cir.).  They    did    not    manufacture    them- 

87  Wormser  v.  Shayne,  111  111.  selves,  but  had  special  arrangements 
App.  556-1904;  Polzker  v.  Lucas,  with  certain  manufacturers,  special 
24  R.  P.  C.  551-1907  (Ct.  Sess.  rooms  and  machinery  being  set  apart 
[Scotl.]  Outer  House).  Complain-  for  their  work.  Held  no  such  mis- 
ers, who  had  a  number  of  shops  for  representation  as  to  preclude  from 
the  sale  at  retail  of  shirts  and  col-  relief. 


49-1  Unfair  Business  Competition. 

stove  had  been  the  same  as  that  sold  by  others  as  "  Canopy," 
he  had  a  right  to  give  it  another  name.88  To  say  regarding 
pills  of  domestic  manufacture  that  they  were  "  specially 
packed  for  U.  S.  America  "  did  not  necessarily  imply  that 
they  were  imported,  and  fell  "  far  short  of  being  a  false  rep- 
resentation."89 

§  274.  Misrepresentations  Implying  Claim  of  Monopoly  — 
Use  of  Term  "  Patented." — An  article  is  sometimes  described 
as  "  patented,"  or  a  mark  or  device  as  "  copyrighted  "  or 
"  registered,"  where  the  fact  is  otherwise.  Is  that  a  merely 
technical  inaccuracy,  not  tending  really  to  mislead  the  public, 
or  is  it  intended  to  convey  a  false  impression,  such  as  that 
the  advertiser  has  patent  rights  which  give  him  a  monopoly 
in  certain  valuable  features  of  his  goods!  In  Flavel  v.  Har- 
rison,90 plaintiff  made  and  sold  a  stove  or  kitchen  range  called 
"  Flavel 's  Patent  Kitchener,"  although  it  had  never  been 
patented,  and  he  was  denied  a  preliminary  injunction  on  the 
ground  that  he  had  falsely  described  his  goods  as  patented. 

Where  a  company  advertised  that  its  method  was  patented, 
and  its  right  so  to  mark  exclusive,  and  no  such  patent  right 
existed,  the  Vice-Chancellor  of  New  Jersey  said:  "  It  was 
moreover  a  falsehood  publicly  made  by  advertisements  for 
the  apparent  purpose  of  influencing  dealers,  who  were  adopt- 
ing the  method  of  having  their  names  woven  on  the  goods  by 
manufacturers,  to  deal  with  complainant  only,  under  penalty 
of  infringement  of  patent,  and  it  may  possibly  have  had  this 
effect  "  It  was  thought  that  had  this  false  statement 
appeared  in  connection  with  the  mark  or  name  on  the 
goods  themselves  it  would  clearly  have  precluded  complain- 
ant from  relief,  but  that,  as  it  was  in  fact  only  a  collateral 
misrepresentation,  there  might  be  doubt  as  to  whether  it  was 
fatal ;  but  on  the  ground  —  among  other  things  —  of  this  mis- 
representation, a  preliminary  injunction  was  denied.91  "  If 
a  trade-mark  represents  an  article  as  protected  by  a  patent, 

iHYan  Horn  v.   Coogan,  52  N.  J.  "Stirling  Silk  Mfg.   Co.   v.   Ster- 

Eq.  3S0-1894;  2S  Atl.  788.  ling    Silk    Co.,   59    N.    J.    Eq.    394- 

"Beecham    v.     Jacobs,    159    Fed.       400-1900;  46  Atl.  199. 
129-1908  (C.  O.  A.  2d  Cir.). 

60 10  Haxe  467-1853;  19  Eng.  L.  & 
Eq.  15. 


Defenses.  495 

when  in  fact  it  is  not  so  protected,  it  seems  to  me  that  such  a 
statement  prima  facie  amounts  to  a  misrepresentation  of  an 
important  fact,  which  would  disentitle  the  owner  of  the  trade- 
mark to  relief  in  a  court  of  equity  against  anyone  who  pirated 
it."  92  The  mere  fact  that  there  has  originally  been  a  patent  will 
not  excuse  the  continued  representation  after  the  patent  ex- 
pired, unless  it  can  be  shown  that  the  word  "  patent,"  as  ap- 
plied to  a  particular  article,  is  no  longer  understood  by  the 
trade  or  the  public  to  imply  an  actually  subsisting  patent,  but 
was  merely  part  of  the  ordinary  designation  of  the  article. 
E  deist  en  v.  Vick9S  appears  to  be  disapproved  by  the  case  just 
mentioned. 

Cheavin  stamped  niters  "  Improved  Patent,"  and  also  with 
the  words  "  By  Her  Majesty's  Royal  Letters  Patent,"  with 
a  medallion  and  the  royal  arms.  The  patent  had  expired 
some  years  earlier.  This  was  construed  as  a  representation 
that  the  patent  was  still  in  force,  and  disentitled  plaintiff  to 
relief,  although  there  was  doubtless  no  actual  intention  to 
deceive.  The  court  decided  it  could  not  assist  in  the  con- 
tinuance of  a  misrepresentation.94 

Describing  in  circulars  a  product  as  patented,  when  the 
patent  has  in  fact  expired  some  years  before,  causes  the 
circulars  to  give  the  public  to  understand  that  the  article 
is  protected  by  a  still  subsisting  patent,  and  thus  tends 
to  "  stifle  competition,  and  to  extend  the  monopoly  granted 
by  the  patent  beyond  the  term  of  such  grant. ' ' 95 

It  makes  no  difference  that  the  representation  as  to  the 
patent  is  made  in  a  part  only  of  the  advertising  matter.  Fraud- 
ulent matter  in  any  considerable  part  of  the  advertising  media 
tinges  the  whole  with  that  fraud  upon  which  equity  looks 
with  disfavor.  On  the  other  hand,  in  a  number  of  cases  the 
use  of  the  word  "  patent  "  or  "  patented,"  where  there  was 
no  patent,  has  been  liberally  construed  as  having  a  meaning 
consistent  with  the  facts,  or  has  been  disregarded  as  immate- 

62  Leather  Cloth  Co.,  Ltd.  v.  Amen-  95  Preservaline  Mfg.   Co.  v.   Heller 

can  Leather  Cloth  Co.,  Ltd.,  11  H.  L.      Chemical  Co.,  118  Fed.  103-1902  (C. 
Cas.  523-42-1865.  C.  111.). 

83 11  Hare  78-1853. 

84  Cheavin  v.    Walker,   5   Ch.   Div. 
850-1877    (Ch.    App.). 


496  Unfair  Business  Competition. 

rial.  For  instance,  where  a  manufacturer  of  aerated  and 
mineral  waters  in  Dublin  and  Belfast  exported  considerable 
quantities  of  soda  water  known  as  "  Club  Soda,"  to  Jamaica, 
and  suit  was  brought  to  restrain  defendants  from  selling  their 
own  soda  under  the  same  name,  it  was  set  up  that  plaintiff 
was  debarred  from  relief,  by  reason  of  a  false  statement  on 
his  label,  viz.,  "  Manufactured  in  Ireland  by  H.  M.  Royal 
Letters  Patent."  The  explanation  given  by  plaintiff  was 
that  this  meant  "  Manufactured  in  Ireland  by  means  of  pat- 
ented machinery."  This  explanation  was  deemed  sufficient 
by  the  court,  Lord  Morris  remarking  that  there  was  nothing 
in  the  evidence  to  throw  doubt  upon  it  or  to  show  that  anyone 
had  been  or  could  be  deceived  by  those  words,  and  saying: 
"  The  appellant's  trade  is  an  honest  trade,  and  their  Lord- 
ships are  not  prepared  to  hold  that  by  reason  of  some  words 
not  designed  to  mislead,  and  at  most  equivocal,  the  appellant 
has  been  guilty  of  a  misrepresentation  which  disentitles  him 
to  relief."90  In  Marshall  v.  Rossm  goods  were  described  as 
"  patent  thread,"  though  not  really  protected  by  a  patent. 
This  was  not  such  a  misrepresentation  as  to  deprive  the 
owner  of  his  right  to  protection  against  an  infringement  of 
his  label.  It  appeared  that  the  goods  had,  by  the  usage  of 
many  years,  acquired  the  designation  of  "  patent"  in  the 
trade. 

Eegistering  "  Insurance  Oil  "  as  a  trade-mark  in  the  pat- 
ent office,  and  branding  goods  "  Trade-mark  Insurance  Oil, 
Pat.,  Jan.  5th,  1875,"  was  taken  to  refer  to  the  registration 
of  the  trade-mark,  and  it  was  held  that  deception  of  the  public 
was  not  sufficiently  shown.98 

§  275.  Misrepresentation  by  Use  of  the  Term  "  Copy- 
righted "  or  "  Registered."— The  use  of  such  terms  as 
"  copyrighted  "   or   "  registered  "  has   been  liberally  dealt 

99  Cochrane    v.    MacNish    &    Son,  label  contained  the  words  "  Pat.  Aug. 

App.  Cas.  225-1896.  13th,    1872,"    this   being   apparently 

87  L.  R.  8  Eq.  651-1869.  the    date   of   registry   of   the   trade- 

98  Insurance  Oil  Tank  Co.  v.  Scott,  mark.     Held  to  be  on  inaccuracy  of 

33  La.  Ann.  946-1881.     In  Calm  v.  small  importance,  and  not  indicative 

Gottschalk,   14   Daly    (N.   Y.)    542-  of  any  intent  to  deceive  the  public. 

1888;  2  N.  Y.  Supp.  13,  plaintiffs' 


Defenses.  497 

with,  in  a  similar  way,  in  many  cases.  That  the  word  "  copy- 
righted "  was  used  in  connection  with  a  trade-mark  or  trade 
name  on  a  cigar  label,  although  there  was  in  fact  no  copyright, 
has  been  held  an  uniniportant  misrepresentation,  and  prob- 
ably an  unintentional  one,  and,  so  not  available  as  a  defense 
to  a  suit  for  infringement."  Although  not  entitled  to 
use  of  a  word  as  a  technical  trade-mark,  a  dealer  had  never- 
theless registered  it  as  such,  and  described  it  on  his  labels  as 
a  "  registered  "  trade-mark.  At  the  time  of  the  registration 
he  knew  of  no  prior  use  by  others,  and  believed  himself 
entitled  to  register  it.  The  statement  being  literally  true, 
though  not  perhaps  conveying  an  accurate  impression,  and  the 
intent  having  been  honest,  there  was  no  such  misrepresenta- 
tion as  to  preclude  relief.1 

Where  the  complainant's  label  included  the  words  "  Trade- 
mark registered,  consisting  of  name,  picture,  and  autograph, 
November  11,  1843,"  and  yet  there  was  no  provision  for  regis- 
tering a  trade-mark  till  long  after  1843,  and  the  trade-mark 
was  not  registered  until  1874;  but  on  November  11,  1843,  a 
book  title  containing  the  name  of  the  medicine  was  filed  under 
the  copyright,  the  statement  was  not  construed  as  dishonest  or 
misleading.2 

The  case  of  Johnson  v.  Seabury*  involved  a  misrepresenta- 
tion, but  it'will  be  noted  that  there  were  various  circumstances, 
such  as  the  discontinuance  of  the  misrepresentation,  which  the 
court  took  into  account  in  deciding  that  the  misrepresentation 
was  not  fatal.  The  complainant  was  widely  known  as  a  maker 
of  absorbent  cotton  and  gauze,  distinguished  by  the  mark  or 
name  of  "  Red  Cross."  From  1894  to  about  1899,  it  stated  in 
catalogues  and  price  lists,  that  by  act  of  Congress  the  American 
National  Red  Cross  Society  was  exclusively  entitled  to  the  red 
cross  symbol,  and  that  this  society  had  granted  to  complainant, 
in  recognition  of  its  services  in  perfecting  surgical  appliances 
and  medicinal  preparations,  the  exclusive  right  to  use  the  red 

68  Soils  Cigar  Co.  v.  Pozo,  16  Colo.  Mansfield   Drug    Co.,   93    Tenn.   84- 

388;  26  Pac.  556.  100-1893;  23  S.  W.  165. 

1  Sartor  v.  Sehaden,  125  Iowa  696-  8  67  Atl.  36-1907  (N.  J.  Err.  & 
1904;  101  N.  W.  511.  App.). 

2  C.   F.   Simmons   Medicine   Co.  v. 

32 


498  Unfair  Business  Competition. 

cross  trade-mark  on  this  class  of  preparations.  This  was  not 
true,  but  there  was  some  foundation  for  it,  in  that  the  Red 
Cross  Society  had  agreed  not  to  contest  complainant's  exclu- 
sive right  so  to  use  the  red  cross  trade-mark,  in  case  a  pending 
bill,  vesting  in  the  society  an  exclusive  right  to  the  red  cross 
symbol,  and  at  first  opposed  by  complainant,  should  be  passed. 
Considering  the  fact  that  the  reputation  of  complainant's 
goods,  under  the  mark  and  name  in  question,  had  been  estab- 
lished before  the  first  publication  of  the  misrepresentation, 
and  that  there  was  no  proof  that  its  trade  had  been  built  up 
by  the  misrepresentation,  and  also  the  fact  that  the  misrepre- 
sentation had  been  discontinued  before  suit  brought,  the  court 
held,  that  the  defense  of  unclean  hands  could  not  be  availed  of. 

§  276.  Misrepresentation  by  Laudatory  Expressions  and 
Exaggerated  Trade  Phrases. — While  false  statements  as  to 
material  matters  of  fact  will  debar  a  suitor  from  relief,  mere 
extravagant  or  exaggerated  commendation  of  the  goods,  which 
are  more  expressions  of  opinion  than  statements  of  facts,  will 
not  have  that  effect. 

Allowance  must  be  made  for  mere  dealers'  talk,  and  for 
trifling  inaccuracies  and  faults.  No  one  has  ever  supposed 
that  every  statement  in  an  advertisement  is  a  warranty  and 
must  be  proved  true  on  penalty  of  losing  the  whole  good-will 
of  the  business.  "  If  it  can  be  established  in  any  case  that  the 
trade  name  which  the  complainant  seeks  to  protect  owes  its 
value  in  any  material  degree  to  false  representations  on  his 
part,  we  think  he  is  not  entitled  to  the  protection  of  a  court  of 
equity.  To  give  him  relief  would  not  perpetuate  a  falsehood 
by  decree  of  the  court  as  in  a  case  where  the  false  representa- 
tion is  on  the  face  of  the  trade-mark  or  label ;  but  it  would  en- 
able a  man  to  profit  by  his  own  wrong,  and  the  court  would  be 
in  the  position  of  protecting  a  property  right  acquired  by 
fraud.  But  we  think  there  is  no  presumption  that  a  trade 
reputation  is  due  to  the  highly  colored  or  false  statements  in 
advertisements.  Such  statements  are  not  so  uncommon  as  to 
mislead  an  ordinary  man;  most  persons  discount  them."4 

*  Johnson   &    Johnson   v.  Seabury 
&  Johnson,  N.  J.  Eq.    ;  67 

Atl.  36-1907,  at  p.  38. 


Defenses.  499 

Representing  grindstones  as  made  from  '■  selected  "  or  the 
"best  blue  Hnron  grit"  was  justified  if  the  quality  of  the 
materials  used  was  not  inferior  to  what  the  trade  generally 
had  expected  as  of  the  grade  indicated.5 

"  This  statement,  '  sold  everywhere,'  is  on  a  par  with  the 
equally  modest  suggestion  of  the  defendant, '  that  his  thread  is 
the  latest  and  best.'  This  harmless  exaggeration  is  under- 
stood and  discounted  by  all.  It  is  not  fraud,  but  merely  trade 
talk.    No  one  is  deceived  and  no  one  is  injured  "  6  (p.  899). 

In  Moxley  Co.  v.  Braun  &  Fitts  Co?  Moxley  made  oleomar- 
garine, which  he  called  "  The  Only  High  Grade."  The  words 
constituted  his  trade-mark,  Moxley  having  begun  to  use  it  in 
1893.  Defendant  began  to  use  a  close  copy  of  the  design  of 
plaintiff's  label,  and  used  with  it  these  same  words.  This, 
phrase  was  treated  as  a  trade  exaggeration  rather  than  as  a 
false  statement  of  fact.  These  words  were  arbitrary  —  not 
capable  of  exactly  defining  or  describing,  the  word  "  only  " 
being  used  as  a  bombastic  catch  word  —  and  the  same 
is  true  of  the  phrase  "  finest  goods  made."  To  be  deceptive 
the  phrase  should  read  "  the  only  high  grade  butterine  we 
make."  "  It  is,  however,"  says  the  court,  "  insisted  by  ap- 
pellant's counsel  that  the  use  of  the  words  '  The  Only  High; 
Grade  '  is  deceptive  and  misleading,  and  that  a  trade-mark 
which  contains  false  representations  will  not  be  protected.  If 
it  be  true  that  the  phrase  or  combination  of  words  in  question 
does  in  fact  contain  a  false  assertion  of  a  material  fact,  made 
so  as  to  deceive  the  public,  it  ought  not  to  receive  the  protec- 
tion of  a  court  of  equity.8  As  is  said  in  Manhattan  Medicine 
Co.  v.  Wood,9  this  is  but  an  application  of  the  maxim  '  that 
he  who  seeks  equity  must  present  himself  in  court  with  clean 
hands.'  If  this  case  disclosed  fraud  or  deception,  or  misrep- 
resentation on  his  part,  relief  will  be  denied.  The  Superior 
Court  found  upon  the  hearing,  and,  we  think  correctly,  that 
appellee   is  not  now  the  only  manufacturer  of  high  grade 

*  Cleveland   Stone  Co.   v.   Wallace,  8  Sebastian    Trade-Marks    36 ;    2?o- 

52  Fed.  431-1892    (C.  C.  Mich.).  lander  v.  Peterson,  136  111.  215-1891; 

"  Clark  Thread  Co.  v.  Armitane,  67  26  N.  E.  603;  11  L.  R.  A.  356. 

Fed.  896-1895   (C.  C.  S.  D.  N.  Y.).  "108  U.  S.  218-1882,  at  p.  225;  27 

7  93  111.  App.  183-1900.  L.  ed.  706;  2  Sup.  Ct.  436 


500  Unfair  Business  Competition. 

butterine.    In  view  of  this  finding,  can  it  in  truth  be  fairly  ad- 
judged that  the  use  of  that  word  '  only  '  discloses  fraud  or 
deception  or  misrepresentation?    The  conclusion  of  the  learned 
chancellor  in  answer  to  this  suggestion  was,  '  that,  after  all, 
what  the  complainant  puts  out  to  the  world  is  simply  an  opin- 
ion.'   It  is  urged  by  appellant  that  said  phrase  '  The  Only 
High  Grade  '  means  that  appellee's  goods  are  the  only  butter- 
ine in  the  market  of  a  high  grade  or  character,  which  is  false. 
To  justify  such  meaning,  however,  additional  words  will  have 
to  be  supplied.    As  the  phrase  stands  it  does  not  constitute  a 
complete  sentence  and  makes  no  positive  assertion.     To  ex- 
press the  meaning  suggested,  it  must  be  made  to  read  '  the  only 
high  grade  butterine  we  make,'  or  to  state  that  appellee  is  the 
manufacturer  of  '  only  high  grade  butterine. '  Either  construc- 
tion is  forced.    The  truth  must,  we  think,  be  admitted  to  be 
that  the  words  in  controversy  are  not,  when  standing  as  they 
do,  alone  by  themselves,  fairly  to  be  considered  as  descriptive. 
They  are  rather  to  be  deemed  arbitrary;  not  capable  of  exact 
definition ;  and  hence  cannot  be  said  to  assert  a  falsehood.    If, 
however,   they   may   be   regarded   as    descriptive,    the   word 
*  only  '  seems  to  us  to  be  in  the  nature  of  a  mere  catch  word, 
expressive  of  nothing  more  than  the  opinion  of  appellee  in  a 
bombastic  way  that  the  goods  so  marked  are  of  such  exalted 
character  as  to  be  properly  entitled  to  be  considered  the  only 
real  high  grade  goods  of  the  kind.    Such  would,  we  think,  be 
the  public  understanding.    In  like  boastful  spirit  appellant  an- 
nounces that  its  goods  are  'the  finest  high  grade  goods  made.' 
There  is  evidence  tending  to  show  that  when  appellee  adopted 
the  device  in  controversy  it  was  the  only  manufacturer  in  the 
country  making  only  a  single  grade  of  butterine,  always  uni- 
form and  of  a  high  grade,  all  others  making  lower  grades  as 
well,  and  using  therefor  cotton  seed  oil,  or  a  lower  and  cheaper 
grade  of  oleo.     It  is  not  denied  that  appellee's  butterine  is 
high  grade.     No  one  purchasing  it  with  such  understanding 
would,  therefore,  be  deceived;  whether  it  is  the  '  only  '  high 
grade  or  not  is  not,  therefore,  material.    To  sustain  appellant's 
contention  it  would  have  to  appear  that  the  alleged  misrepre- 


Defenses.  501 

b:  :  t;  Lions  are  not  only  misleading  or  untrue,  but  that  they  are 
also  material  and  do  in  fact  mislead."  10 

Advertisement  of  an  article  as  "  genuine  "  does  not  mean 
that  it  is  the  best  or  purest  grade.  This  too  is  a  trade  expres- 
sion the  meaning  of  which,  as  used  ordinarily,  is  well  under- 
stood. Genuine  molasses  may  mean  any  grade  of  molasses, 
so  long  as  it  is  molasses.  To  call  a  jewel  a  genuine  stone  from 
a  particular  mine  would  have  a  much  more  specific  meaning, 
and  he  who  used  it  would  be  held  to  strict  correspondence  be- 
tween name  and  article.  Advertising  "  Georgia  Coon  " 
molasses  as  "  genuine  molasses,"  although  it  was  not  genuine 
cane  molasses,  but  largely  glucose,  did  not  imply  that  it  was 
wholly  from  sugar  cane ;  held,  that  the  public  was  not  deceived, 
and  that  plaintiff  was  not  debarred  from  relief  against  the 
infringement  of  his  trade-mark.11 

Extravagant  claims  on  the  part  of  the  proprietor  of  a  patent 
medicine  as  to  its  efficacy,  such  as  statements  that  it  will  cure 
a  large  number  of  diseases,  such  statements  being  in  all  prob- 
ability unfounded,  do  not  constitute  such  fraudulent  mis- 
representations as  to  preclude  the  proprietor  from  relief 
against  a  simulating  competitor. 

Grosscup,  J.,  has  said  of  such  a  claim:12  "  It  is  true  that  the 
remedy  was  advertised  by  appellant  as  a  cure  for  more 
diseases,  perhaps,  than  any  remedy  could  possibly  cure. 
But  this,  in  itself,  is  not  unclean  hands.  Proprietary 
medicines,  generally,  promise  more  than  they  do;  and 
for  that  matter,  licensed  physicians  often  do  the  same. 
And  with  proprietary  medicines,  as  with  physicians,  the 
object  often  is  to  give  mere  temporary  help,  under  the  belief 
of  the  patient  that  he  is  obtaining  a  cure.  But  whether  this 
be  an  improper  use  of  the  public's  confidence,  or  constitutes  a 
practice  against  public  policy,  is  a  question  to  be  decided  by 
the  state,  through  its  legislature,  and  not  by  the  courts  under 
the  equitable  doctrine  of  unclean  hands ;  for,  so  far  as  this  case 

10  Dadirrian  v.  Yacubian,  98  Fed.  "Dr.  Peter  II.  Fakrney  &  Sons 
872-1900  (C.  C.  A.  1st  Cir.),  cited  Co.  v.  Ruminer,  153  Fed.  735-1907 
by  appellant's  counsel.                               (C.  C.  A.  7th  Cir.). 

11  Western  Grocer  Co.  v.  Caffarelli 
Bros.,    Tex. ;  108  S.  W.  413-1908. 


502  Unfair  Business  Competition. 

discloses,  proprietary  medicines  are  lawful  commerce,  and  are 
to  be  given  the  freedom  of  mere  trade  boasting  that  ordinary 
commerce  is  allowed  to  enjoy  "  (p.  737). 

Brown,  D.  J.,  says:13  "  It  would,  perhaps,  be  consistent  with 
the  reasoning  in  School  of  Magnetic  Healing  v.  McAnnulty,14 
to  hold  that  statements  concerning  the  efficacy  of  a  secret  medi- 
cine are  to  such  an  extent  mere  matters  of  opinion  or  pre- 
diction that  it  is  not  practically  possible  to  determine  as  a  fact 
that  the  claims  are  so  far  unfounded  as  to  justify  a  court  in 
finding  false  pretenses."     See  §  2G9. 

§  277.  Miscellaneous  Cases  of  Misrepresentation  Deemed 
Harmless. —  Various  statements  have  been  held  immaterial 
and  harmless  —  many  of  which  relate  to  the  name  of  a  pro- 
prietor or  manufacturer.  For  instance,  the  use  of  part  of  a 
name  for  the  whole  has  been  held  not  fraudulent  if  (1)  it 
was  not  used  with  fraudulent  intent;  (2)  no  actual  deceit 
resulted.15  This  case  would  seem  inconclusive  in  this  regard. 
"While  perhaps  there  was  good  intention  and  no  loss  or  deceit 
resulted  in  that  particular  instance,  it  is  not  difficult  to  imagine 
cases  where  such  an  act  on  plaintiff's  part  might  cause  decep- 
tion of  many  persons. 

§  278.  Claiming  Falsely  to  be  a  Corporation. —  Tt  has  been 
urged  that  relief  should  be  denied  to  those  who  hold  them- 
selves out  as  a  corporation  when  they  are  thereby  misleading 
and  deceiving  the  public.  Misrepresentation  of  this  sort,  to 
justify  the  court  in  refusing  the  relief  must,  however,  be  such 
as  is  intended  to,  or  does  in  fact,  mislead  or  cheat  the  public  — 
such  as  operates  as  a  fraud  upon  the  public.  The  mere  use 
of  the  name  "  Standard  Distilling  Company,"  without  more, 
is  not  sufficient  to  warrant  the  court  in  assuming  as  a  fact  that 

13  Moxie  Nerve   Food   Co.  v.   Hoi-  Dale,    of   the   name   Thomas   Nelson 

land,    141    Fed.    202-1905     (C.    C.  was  upheld  as  not  being  such  a  false 

"R.  I.).  name  as  would  prevent  a  court  from 

"187  U.  S.  94-1902;  23  Sup.  Ct.  protecting  it  because,   (1)    not  used 

33;  47  L.  ed.  90.  with  fraudulent  intent,  but  in  some 

15  Dale   v.   Smithson,   12    Abb.   Pr.  way  in   which   plaintiff   might    have 

<N.  Y.)  237-1861.     Use  by  plaintiff,  used  an  emblem;    (2)   no  actual  de- 

■whose    name    was    Thomas    Nelson  ceit  to  the  public  resulted. 


Defenses.  503 

the  complainant  thereby  intended  to  mislead  and  cheat  the 
public,  or  that  the  public  thereby  was  cheated  or  misled.16 

It  is  not  a  valid  defense  to  an  action  for  unfair  competition 
against  a  corporation  that  the  person  whose  name  forms  a 
part  of  the  corporate  name  is  no  longer  connected  with  the 
corporation.  The  fact  of  the  name  of  the  person  being  in 
the  corporate  name  does  not  import  that  he  is  at  the  time  in 
question  still  connected  with  it.17 

§  279.  Use  of  Term  "  Established  in."— The  words  "  Es- 
tablished in  1812  "  may  not  mean  that  the  person  or  firm 
using  them  were  actually  in  business  in  1812,  or  that  the 
building  now  in  use  was  built  in  1812,  but ' '  a  customer  *  *  * 
would  probably  conclude  that  complainant  had  succeeded  in 
some  way  to  the  rights  of  those  who  began  making  thread 
in  1812.  "18  Such  a  phrase  may  be  used  so  as  to  deceive 
when  the  date  of  the  establishing  of  a  concern  is  important. 

§  280.  Abandonment. —  By  abandonment  is  meant  the  volun- 
tary and  intentional  disuse  or  nonuser  of  the  name  or  mark. 
With  this  may  also  be  classed  conscious  and  intentional  dedi- 
cation to  the  public. 

Abandonment  is  purely  a  question  of  intent.  Mr.  Justice 
Brown  says:19  "  To  establish  the  defense  of  abandonment  it  is 
necessary  to  show  not  only  acts  indicating  a  practical  aban- 
donment, but  an  actual  intent  to  abandon.  Acts  which  unex- 
plained would  be  sufficient  to  establish  an  abandonment  may 
be  answered  by  showing  that  there  never  was  an  intention  to 
give  up  and  relinquish  the  right  claimed."  Lapse  of  time  is 
merely  one  circumstance  among  others  to  be  taken  into 
account  in  determining  whether  or  not  an  intentional  aban- 
donment is  to  be  inferred. 

"Block   v.    Standard   Distilling    &  n  Clark    Thread    Co.   v.   Armitage, 

Distributing   Co.,  95   Fed.   978-1899  67  Fed.  896-1895    (C.  C.  S.  D.  N. 

(C.  C.  Ohio).  Y.),  at  p.  898. 

"Dodge  Stationery  Co.  v.  Dodge,  "  Saxlehner  v.   Eisner   &   Mendel- 

145    Cal.    380-1904;    78    Pac.    879;  son  Co.,  179  U.  S.  19-31-1900;  44 

Holmes,  Booth  &  Haydens  v.  Holmes,  L.  ed.  60 ;  21  Sup.  Ct.  7. 
Booth  it  Atwood  Mfg.  Co.,  37  Conn. 
278-1870. 


504  Unfair  Business  Competition. 

Consent  to  the  appropriation  of  trade-marks  is  not  to  be 
inferred  from  long  silence  and  knowledge.  "  The  use  of  one's 
trade-mark  by  another  is  a  continuing  wrong,  and  the  right 
to  prevent  its  continuance  can  rarely  be  lost  by  mere  delay 
of  assertion.  There  must  be  some  element  of  estoppel."20 
Delay  will  not  bar  the  right  to  injunction,  though  it  may  bar 
damages. 

"  In  order  to  deprive  a  manufacturer  of  his  right  to  a 
trade-mark,  the  use  of  which  has  been  practically  given  up 
for  a  period  of  five  years,  mere  discontinuance  of  user  for 
lack  of  demand,  though  coupled  with  nonregistration  and 
nonassertion  of  any  right,  is  not  enough;  there  must  be  evi- 
dence of  distinct  intention  to  abandon  "  (head-note).21  The 
burden  of  establishing  abandonment  is  upon  the  party  affirm- 
ing it,  and  intention  to  abandon  will  not  be  inferred  from 
nonuser,  especially  if  only  for  a  short  time,  as  less  than  one 
year.22 

"  Abandonment  of  the  right  to  the  exclusive  use  of  a  dis- 
tinctive package  or  other  dress  for  his  goods  by  its  origina- 
tor, who  has  used  it  generally  and  continuously  for  many 
years,  is  not  shown  by  the  fact  that  it  has  been  also  used,  not 
only  by  defendant,  but  by  others,  unless  it  further  appears 
that  there  has  been  such  acquiescence  by  complainant  as  to 
indicate,  not  only  a  practical  abandonment,  but  also  an  inten- 
tion to  abandon  "  (headnote).23  A  dedication  or  aban- 
donment to  the  public  of  a  trade-mark  or  trade  name  will  not 
be  inferred  where  the  assent  or  acquiescence  of  the  proprietor 
does  not  clearly  appear.24  Mere  delay  in  bringing  suit  does 
not  show  intention  to  abandon,  nor  preclude  protection.25 

"  One  who,  after  using  an  alleged  trade-mark  for  a  short 
time,  abandons  it  for  nearly  a  quarter  of  a  century,  has  no 
right  to  resume  its  use  after  it  has  been  long  employed  by 

20  Michigan  Condensed  Milk  Co.  v.  23  Actiengesellschaft    V.    U.    F.    v. 

Kenneweg  Co.,  30  App.  Cas.  (D.  C.)  Ambcrg,  109   Fed.   151-1901    (C.   C. 

491.  A.  3d  Cir.). 

21Mouson  &  Co.  v.  Boehm,  L.  R.  **  Filleij   v.   Fassett,   44  Mo.   168- 

26  Ch.  Div.  398-1884.  1869. 

22  Julian  v.  Hoosier  Drill  Co.,  78  M  Williams  v.  Adams,  8  Biss.  452- 

Ind.  408-1881.  1879   (C.  C.  111.). 


Defenses.  505 

another,  who  has  built  up  under  it  a  large  and  successful 
business  "  (head-note).26  A  trade-mark  right  is  to  be  deemed 
abandoned  by  an  eight  years'  nonuser,  and  cannot  be  resumed 
as  against  one  who  has  used  it  exclusively  during  that  period 
(or  a  substantial  part  of  it),  especially  if  such  use  has  been 
without  intention  to  appropriate  a  mark  originated  by 
another.27 

Complainants'  assignor,  Martin,  was  a  member  of  a  firm 
that  had  for  some  years  used  the  name  "  Marguerite  "  as  a 
trade-mark  or  trade  name  for  a  tooth  brush.  Gibson,  de- 
fendants' predecessor,  had  at  the  same  time  been  using  the 
name  "  Marguerite."  Martin's  firm  sued  Gibson  for  infringe- 
ment and  he  promised  to  discontinue  using  the  name.  The  firm 
then  failed,  and  Martin  went  on  in  business,  using  the  same 
name.  When  Martin's  firm  failed,  it  abandoned  the  trade-mark 
or  trade  name,  and  Martin's  use  of  it  was  to  be  dated  from 
after  the  failure,  and  defendant  was  entitled  to  use  the  similar 
name.    Injunction  denied.28 

In  a  technical  trade-mark  case  a  discontinuance  of  the  use 
of  "  Radium  "  as  a  trade-mark  for  about  a  year  and  a  half 
(the  word,  meanwhile,  being  used  by  others),  was  deemed  an 
abandonment.29 

Somewhat  more  than  five  years  after  defendants  began  to 
sell  goods  under  a  name  similar  to  plaintiffs',  plaintiffs 
brought  suit  to  restrain  infringement  and  passing  off.  They 
had  known  of  the  acts  complained  of  for  nearly,  if  not  quite,  the 
whole  time  since  they  were  begun.  Defendants  had  advertised 
their  business  widely  and  gradually  built  up  a  large  trade. 
This  delay  barred  relief.30 

§  281.  Kinds  of  Laches. —  Laches  differs  from  abandonment, 
in  that  the  element  of  intention  is  absent.  Cases  where  this 
defense  is  set  up  may  be  divided  into  two  classes:  (1)  where 

26  Raymond  v.  Eoyal  Baking-Pow-  155   Fed.   383-1907    (C.    C.   N.   T.), 

der  Co.,  29  C.  C.  A.  (7th  Cir.)  245  Hough,  J. 

1898;  85  Fed.  231.  29  Eisemaan   v.    Schifer,   157   Fed. 

"Blackwell    &    Co.    v.    Dibrell    &  473-1907  (C.  C.  N.  Y.). 

Co.,  3  Hughes  151-1878  (U.  S.  C.  C.  so  McCaw,  Stevenson   &    Orr,  Ltd. 

Va.).  v.   Lee   Bros.,   23   R.  P.   C.   1-1905 

28 Deitsch  v.  George  R.  Gibson  Co.,  (Ch.  Div.). 


506  .         Unfair  Business  Competition. 

there  has  been  mere  delay  in  taking  action,  and  (2)  where 
there  has  been  snch  acquiescence  as  to  make  it  inequitable  for 
the  suitor  to  claim  the  rights  originally  enjoyed  by  him  against 
the  public  at  large,  or  against  the  particular  defendant.  The 
application  of  the  equitable  doctrine  of  laches  in  unfair  com- 
petition cases  differs  somewhat  from  its  application  in  other 
branches  of  equitable  jurisdiction. 

§  282.  Laches,  in  the  Sense  of  Mere  Delay. —  The  proprietor 
of  a  trade  name  has  no  occasion,  and  is  not  in  duty  bound  to 
interfere  with  one  using  a  similar  name,  unless  and  until  such 
person  enters  his  field  and  seeks  to  deprive  him  of  his  trade, 
and  until  his  business  is  actually  affected  by  unfair  competi- 
tion. Prior  inaction  on  his  part  does  not  constitute  laches.51 
Even  the  fact  that  one's  business  is  encroached  upon  does  not 
of  itself  require  one  to  act,  under  penalty  of  forfeiting  the  right 
to  injunctive  relief.  Mere  delay,  unless  in  any  particular  juris- 
diction the  case  falls  within  some  statute  of  limitations,  is 
usually  no  bar  to  relief  by  injunction. 

In  Fullwood  v.  Fullwood,32  the  defendant  alleged  that,  for 
between  two  and  three  years,  plaintiff  had  known  all  the  ma- 
terial facts  in  pleadings,  and  consequently  set  up  the  defense  of 
laches.  The  court  said : ' '  The  plaintiff  knew  of  all  the  material 
facts  which  have  been  brought  before  me  to-day  (in  1875) ; 
he  commenced  his  action  in  November,  1876.  In  my  opinion 
that  delay,  and  it  is  simply  delay,  is  not  sufficient  to  deprive 
the  plaintiff  of  his  rights.  The  right  asserted  by  plaintiff  in 
this  action  is  a  legal  right.  He  is,  in  effect,  asserting  that  the 
defendants  are  liable  to  an  action  for  deceit.  It  is  clear  that 
such  an  action  is  subject  to  the  Statute  of  Limitations,  and  it 
is  also  clear  that  the  injunction  is  sought  merely  in  aid  of  the 
plaintiff's  legal  right.  In  such  a  case  the  injunction  is,  in  my 
opinion,  a  matter  of  course  if  the  legal  right  be  proved  to  exist. 
In  saying  that  I  do  not  shut  my  eyes  to  the  possible  existence 
in  other  cases  of  a  purely  equitable  defense,  such  as  acquies- 
cence or  acknowledgment  and  the  various  other  equitable  de- 
fenses which  may  be  imagined.    But  mere  lapse  of  time,  unac- 

81  Sartor    v.    Schaden,    125    Iowa         M  9  Ch.  Div.  176-79-1878. 
696-1904;  101  N.  W.  511. 


Defenses.  507 

companied  by  anything  else  (and  to  that  I  confine  my  observa- 
tions) has,  in  my  judgment,  just  as  much  effect,  and  no  more, 
in  barring  a  suit  for  an  injunction  as  it  has  in  barring  an  ac- 
tion for  deceit." 

Citing  this  case,  Chief  Justice  Fuller  in  Menendez  v.  Holt,™ 
says :  "  Nor  will  the  issue  of  an  injunction  against  the  infringe- 
ment of  a  trade-mark  be  denied  on  the  ground  that  mere  pro- 
crastination in  seeking  redress  for  depredations  had  deprived 
the  true  proprietor  of  his  legal  right." 

Judge  Duer,  in  Amoskeag  Manufacturing  Co.  v.  Spear?* 
takes  the  position  that  by  acquiescence  the  owner  of  a  mark 
does  not  lose  his-.right,  whether  this  acquiescence  be  expressed 
or  implied;  but  that  his  position  is  rather  that  of  one  granting 
a  revocable  license,  and  he  is  supported  in  this  view  by  Fuller, 
C.  J.,  in  Menendez  v.  Holt  (supra). 

Duer,  J.,  says:  "The  consent  of  a  manufacturer  to  the  use 
or  imitation  of  his  trade-mark  by  another,  may,  perhaps,  be 
justly  inferred  from  his  knowledge  and  silence ;  but  such  a  con- 
sent, whether  express  or  implied,  when  purely  gratuitous,  may 
certainly  be  withdrawn,  and  when  implied  it  lasts  no  longer 
than  the  silence  from  which  it  springs ;  it  is,  in  reality,  no  more 
than  a  revocable  license.  The  existence  of  the  fact  may  be  a 
very  proper  subject  of  inquiry  in  taking  an  account  of  profits, 
if  such  an  account  shall  hereafter  be  decreed;  but  even  the  ad- 
mission of  the  fact  would  furnish  no  reason  for  refusing  an 
injunction  "  (p.  614). 

Judge  Fuller's  statement  is  this:  "  Where  consent  by  the 
owner  to  the  use  of  his  trade-mark  by  another  is  to  be  in- 
ferred from  his  knowledge  and  silence  merely,  '  it  lasts  no 
longer  than  silence  from  which  it  springs ;  it  is,  in  reality,  no 
more  than  a  revocable  license,'  "35  citing  Amoskeag  Mfg.  Co. 
v.  Spear. 

"  So  far  as  the  act  complained  of  is  completed,  acquiescence 
may  defeat  the  remedy  on  the  principle  applicable  when  action 
is  taken  on  the  strength  of  encouragement  to  do  it,  but  so  far 

"128  U.  S.  514-23-1888;  32  L.  ed.  u  Julian  v.  Homier  Drill   Co.,  78 

526 ;  9  Sup.  Ct.  143.  Ind.  408-1881 ;   Taylor  v.  Carpenter, 

b42  Sandf.  (N.Y.)  599-1849.  3  Story  458-1844  (C.  C.  Mass.). 


508  Unfair  Business  Competition. 

as  the  act  is  in  progress  and  lies  in  the  future,  the  right  to  the 
intervention  of  equity  is  not  generally  lost  by  previous  delay, 
in  respect  to  which  the  elements  of  an  estoppel  could  rarely 
arise.  At  the  same  time,  as  it  is  in  the  exercise  of  discretionary 
jurisdiction  that  the  doctrine  of  reasonable  diligence  is  ap- 
plied, and  those  who  seek  equity  must  do  it,  a  court  might  hesi- 
tate as  to  the  measure  of  relief,  where  the  use,  by  others,  for  a 
long  period,  under  assumed  permission  of  the  owner,  had 
largely  enhanced  the  reputation  of  a  particular  brand  "(p. 
524). 

§  283.  First  User  of  Mark  May  Revoke  License  Implied 
from  Laches. —  The  doctrine  of  laches  as  to  stale  claims  in 
matters  of  trust  does  not  apply  in  full  force  to  unfair  competi- 
tion cases,  where  acquiescence  will  not  usually  be  inferred,  and 
even  if  at  one  time  the  facts  would  justify  a  presumption  of 
such  acquiescence,  there  still  exists  in  the  first  user  a  right  of 
revocation  of  such  acquiescence.36 

In  Schmidt  v.  Brieg,37  the  plea  of  laches  was  set  up  for  the 
first  time  in  the  appellate  court.  The  court  there  said :  ' '  The 
point  ought  to  have  been  raised  at  least  at  the  time  the  mo- 
tion for  a  nonsuit  was  made,  the  facts  having  come  out  in  the 
evidence  of  the  plaintiffs;  but  conceding  for  the  purposes  of  the 
discussion  that,  notwithstanding  the  failure  of  the  defendants 
to  set  up  the  plea  of  laches  until  this  time,  we  think  the  con- 
tention is  not  supported  by  the  admitted  facts.  Tne  action 
was  commenced  about  two  years  after  the  plaintiffs  discovered 
the  infringements,  and  the  record  shows  that  plaintiff  had, 
prior  to  the  bringing  of  this  action,  brought  suit  against  other 
infringers,  and  that  the  defendants  not  only  had  notice  of  this 
prior  litigation,  but  had  changed  the  color  of  their  label  on  ac- 
count of  a  decision  in  the  court  below.  The  doctrine  of  laches, 
as  applied  to  stale  claims  in  matters  of  trust,  does  not  apply 
with  full  force  to  cases  of  infringement  "  (p.  681). 

For  over  fifteen  years  stationers  had  been  selling  pens  of 

M  McCardel  v.  Peck,  28  How.  Pr.  the  use  of  a  trade  name  or  mark  by 

(N.  Y.)   120-1864.     Controversy  re-  another  is  deemed  to  confer  only  a 

lated  to  unfair  competition  by  use  revocable  license. 

of  "McCardel  House"  as  name  of  "  100  Cal.  672-1893;  35  Pac.  623; 

hotel.      In    general    acquiescence    in  22  L.  R.  A.  790. 


Defenses.  509 

other  makers  which  closely  resembled  plaintiffs',  especially 
in  the  use  of  the  arbitrary  numeral  "  303,"  and  it  did  not  ap- 
pear how  far  plaintiff  had  actual  knowledge  of  specific  acts  of 
infringement,  except  that  he  placed  on  his  boxes  a  caution  to 
the  public  against  the  imitations  that  were  on  the  market.  It 
was  held,  that  it  was  no  defense  that  the  fraud  has  been  multi- 
plied, and  that  acquiescence  could  not  be  inferred,  and  that  it 
was  revocable  if  it  could  be.  Acquiescence  cannot  be  inferred 
from  a  caution  to  the  public.38 

§  284.  No  Presumption  of  Acquiescence  Arises  from  an 
Exclusive  Right. — Where  the  plaintiff  has  an  exclusive  right 
no  presumption  of  acquiescence  can  arise.  Where  a  person 
had  long  used  the  name  "  Blue  Lick  "  for  his  spring,  it  was 
held39  that  he  had  acquired  an  exclusive  right  to  the  name,  and 
whatever  money  a  rival  might  have  expended  in  the  purchase 
and  improvement  of  an  artesian  well  with  the  purpose  of  using 
the  words  "  Blue  Lick  "  as  his  trade-mark  in  the  sale  of  water 
therefrom,  was  spent  at  his  own  risk;  for  no  presumption  of 
acquiescence  by  appellees  in  such  wrongful  appropriation  of 
their  property  could  arise,  nor  could  they  be  thus  estopped  to 
assert  their  rights. 

§  285.  Material  Delay  Bars  Right  to  an  Accounting  of 
Profits. —  But  material  delay  will,  as  a  rule,  bar  the  right  to 
an  accounting,  although  the  right  to  an  injunction  is  not  lost ; 
but  it  will  not,  even  though  it  be  a  delay  of  some  years,  bar 
the  right  to  an  action  at  law  for  damages  for  misuse  of  a  label 
or  name  or  mark.40  Where  the  proprietors  of  a  spring 
take  no  action  for  thirty  years  against  one  so  labeling  and 
selling  artificial  water,  as  water  from  their  spring,  they  are 
precluded  by  laches  from  demanding  an  account  of  profits 
during  that  time.41 

"Gillott   v.   Esterbrook,   47   Barb.  Pr.    (N.  Y.)    297-1876.     La  Eepub- 

(N.  Y.)  455-1867.  lique  Francaise  v.  Schultz,  102  Fed. 

"Northcutt    v.    Turney,    101    Ky.  153-1900  (C.  C.  A.  2d.  Cir.).    Label- 

314-1897 ;  41  S.  W.  21.  ing  bottles  of  artificial  mineral  water 

40  Saxlehner  v.  Eisner  <St  Mendelson  as   "Vichy    (Grand   Grille)"  implies 

Co.,  179  U.   S.   19-1900;   44  L.  ed.  that  the  water  is  the  natural  water 

60;  21  Sup.  Ct.  7.  from  the  Grand  Grille  Spring,  and 

"  Amoskeag   v.    Garner,    54    How.  constitutes     unfair     competition     as 


510 


Unfair  Business  Competition. 


If  defendants  place  on  goods  a  cautionary  notice,  after  a 
former  action  against  them  for  unfair  trading,  and  it  does  not 
prove  sufficient  to  prevent  deception,  the  fact  that  they  at- 
tempted to  differentiate  by  the  notice  may  be  a  reason  for 
refusing  to  order  an  accounting  of  prof ts  against  them  on  a 
second  injunction  being  issued.42 


against  those  selling  the  natural  wa- 
ter. Cahn  v.  Gottschalk,  14  Daly 
(N.  Y.)  542-1888;  2  N.  Y.  Supp.  13. 
It  was  held  that  five  years'  delay  in 
bringing  suit,  after  notice  of  acts  of 
unfair  competition,  would  bar  an  ac- 
counting of  profits,  though  not  the 
granting  of  an  injunction.  Bissell 
Chilled  Plow  Works  v.  T.  M.  Bissell 
Plow  Co.,  121  Fed.  357-1902  (C.  C. 
Mich.),  involving  a  delay  of  six 
years,  which  barred  right  to  damages. 
Dr.  Peter  H.  Fahmey  &  Sons 
Co.  v.  Ruminer,  153  Fed.  735-1907 
(C.  C.  A.  7th  Cir.).  Complainant 
notified  defendants  to  desist  from 
the  use  of  a  trade  name  which  con- 
stituted unfair  competition,  and  de- 
fendants refused  to  do  this.  Com- 
plainant waited  four  years  before 
proceeding  legally  against  defend- 
ants. Held,  that  whatever  effect  such 
delay  might  have  upon  the  light  to 
damages,  it  did  not  preclude  com- 
plainant from  injunctive  relief.  Low 
v.  Fels,  35  Fed.  361-1888  (C.  C.  E. 
D.  Pa.).  Plaintiffs  were  English 
manufacturers  of  soap  and  perfum- 
ery, especially  of  a  soap  widely 
known  as  "  Brown  Windsor  Soap." 
They  had  never  sold  their  own  ar- 
ticle extensively  in  the  United  States, 
but  for  many  years  imitations  had 
been  made  and  sold  there,  without 
interference  on  the  part  of  plaintiffs, 
and  it  had  been  generally  under- 
stood that  the  name  and  labels  were 
open  to  the  use  of  the  trade.  De- 
fendant conceded  that  plaintiffs  were 


entitled  to  an  injunction.  Held,  that 
they  were  not  entitled  to  an  account 
of  sales  or  damages.  Harrison  v. 
Taylor,  11  Jur.  N.  S.  408-1865.  De- 
fendants delayed  bringing  suit  for 
trade-mark  infringement  for  nearly 
a  year.  Held,  that  although  entitled 
to  an  in  junction,  plaintiffs  had  lost 
their  right  to  an  account  of  profits. 
Defendants  allowed  one  month  in 
which  to  discontinue  using  the  mark. 
Worcester  Brewing  Corp.  v.  Rueter 
&  Co.,  157  Fed.  217-1907  (C.  C. 
A.  1st  Cir.).  Complainant,  after  be- 
coming aware  of  unfair  competition 
upon  the  part  of  the  defendant  by 
the  use  of  the  trade  name  of  its 
product  ("Sterling  Ale"),  waited 
fifteen  months  before  warning  de- 
fendant and  sixteen  months  before 
bringing  suit.  The  circumstances  in- 
dicated that  the  defendant  had  no 
fraudulent  intent,  and  he  was  shown 
to  have  expended  a  considerable  sum 
in  advertising  his  competing  product 
after  complainant  had  learned  of  the 
facts  upon  which  unfair  competition 
was  predicated.  Held,  that  (while 
complainant  had  not  lost  the  right  to 
an  injunction)  the  right  to  an  ac- 
counting for  profits  was  waived.  In 
determining  the  period  of  delay  nec- 
essary to  bar  an  accounting,  it  is 
an  important  consideration  whether 
defendant's  infringement  was  de- 
liberate or  unintentional. 

u  Dr.  A.  Reed  Cushion  Shoe  Co. 
v.  Frew,  158  Fed.  552-1908  (C.  C. 
N.  Y.). 


Defenses.  Oil 

§  286.  Laches  May  Bar  Right  to  Order  for  Destruction  of 
Offending  Goods. — Laches  will  bar  also  the  right  to  an  order 
directing  destruction  or  delivery  over  of  goods  in  hands  of 
defendant  which  infringe  those  of  plaintiff.43 

§  287.  Laches  which  Bars  Right  to  Preliminary  Injunction. 
—  A  delay  of  some  six  months  in  bringing  suit  will  ordinarily 
defeat  the  right  to  a  preliminary  injunction, —  unless  complain- 
ant's rights  pending  final  hearing  cannot  be  otherwise  pro- 
tected, and  unless  at  the  same  time  the  inconvenience  of  an  in- 
junction to  defendant  would  be  much  less  than  the  incon- 
venience to  complainant  of  refusing  an  injunction.44  Delay  in 
suing,  although  not  precluding  from  ultimate  injunctive  re- 
lief, will  be  considered  by  the  court  on  an  application  for  a 
preliminary  injunction,  and  has  often  been  held  to  bar  the  right 
to  the  interlocutory  relief.45  The  court  will,  if  necessary,  guard 
against  the  injury  which  the  sudden  imposition  of  an  injunc- 
tion without  notice  might  cause.  It  is  said:  "  When  delay  of 
the  owner  of  a  patent  or  trade-mark  to  prosecute  infringers 
has  been  of  a  tendency  to  mislead  the  public  or  the  defendant 
sought  to  be  enjoined  into  a  false  security,  and  a  sudden  in- 
junction would  result  injuriously,  it  ought  not  to  be  granted 
summarily,  but  the  complainant  should  be  left  to  his  relief  at 
final  hearing.  So  also  where  as  in  this  instance  the  extensive 
use  of  the  trade-mark  by  others  with  the  implied  acquiescence 
of  the  owner  has  contributed  to  give  a  reputation  and  create 
a  demand  for  the  article  to  which  it  has  been  applied  which 
it  would  not  otherwise  have  acquired,  equity  should  not  by  any 
stringent  intervention  assist  the  owner  to  secure  these 
fruits."46 

Other  examples  of  what  has  and  has  not  been  considered  such 
undue  delay  in  suing  as  will  warrant  a  court  in  refusing  a 
preliminary  injunction,  are  found  in  the  note.47 

-  County   Chemical  Co.  v.  Frank-  *°  Estes    v.    Worthington,   22    Fed. 

enburg,  21  R.  P.  C.  722.  822-1885  (C.  C.  S.  D.  N.  Y.). 

"  Stirling   Silk  Mfg.   Co.  v.   Ster-  "  Isaacson  v.   Thompson,  41  L.   J. 

ling  Silk  Co.,  59  N.  J.  Eq.  394-1900 ;  (Ch.)     N.    S.    101-1871.      Plaintiff 

46  Atl.  199.  knew  of  what  defendant  was  doing:. 

a  Biseell    Chilled    Plow    Works    v.  The  four  mistakes  alleged  occurred, 

T.    M.    Bissell   Plow    Co.,   121    Fed.  two  in  December,  1870,  one  in  Janu- 

357-1902  (C.  C.  Mich.).  ary,  1871,  one  in  May,  1871.     This 


5X2 


i  ntfaie  Business  Competition. 


§  288.  Acquiescence  in  the  Sense  of  Inaction  upon  which 
Others  Have  the  Right  to  Rely.— "Acquiescence  is  where  a 
person  who  knows  that  he  is  entitled  to  *  *  *  enforce  a 
right,  neglects  to  do  so  for  such  a  length  of  time  that  under  the 


motion  was  made  for  a  preliminary 
injunction  December  5,  1871.  "But 
I  find  lie  (plaintiff)  was  in  possession 
of  nearly  all  the  evidence  in  sub- 
stance which  he  now  possesses,  in  the 
summer  of  last  year,  and  I  find  no 
steps  taken  until  that  which  is  called 
an  offensive  advertisement  appeared. 
*  *  *  If  the  case  stood  on  the 
evidence  as  it  is  now  before  me,  and 
the  application  had  been  made  in 
good  time,  I  should  have  felt  it  my 
duty  to  grant  the  injunction  asked 
for.  *  *  *  But  as  the  plaintiff's 
case  is  one  which  must  be  the  sub- 
ject of  judicial  decision,  and  as  lie 
has  chosen  to  wait  until  this  month 
of  November,  the  bill  having  been 
filed  on  the  4th  of  November,  1871, 
and  he  having  known  from  Febru- 
ary, 1871,  the  danger  which  had 
existed  all  the  time,  I  do  not  think 
it  is  a  case  in  which  I  am  at  liberty 
to  grant  him  the  injunction  he  asks  " 
(at  p.  103).  Edward  &  John  Burke, 
Ltd.  v.  Bishop,  144  Fed.  838-1906 
(C.  C.  A.  2d  Cir.).  Ten  years'  ac- 
quiescence in  the  conduct  of  the  real, 
though  not  the  nominal,  defendant 
held  to  constitute  such  laches  as  to 
bar  any  right  to  a  preliminary  in- 
junction. C.  0.  Burns  Co.  v.  IF.  F. 
Bums  Co.,  118  Fed.  944-1002  (C.  C. 
8.  D.  N.  Y.).  "A  preliminary  in- 
junction to  restrain  unfair  com- 
petition will  not  be  granted  on  con- 
flicting evidence,  where  complainant 
had  known  of  the  purposes  and 
practices  of  the  defendant  for  a  year 


and  a  half  before  commencing  suit, 
during  all  of  which  time  they  were 
active  competitors  in  business " 
(headnote).  Von  Mumm  v.  Stein- 
metz,  137  Fed.  1GS-1905  (C.  C.  S.  D. 
N.  Y.).  "Although  unfair  competi- 
tion, by  simulating  the  dress  of  com- 
plainant's goods,  is  apparently 
shown,  a  preliminary  injunction  will 
not  be  granted,  where  it  appears  that 
defendant  has  publicly  used  the  same 
dress  for  many  years"  (head-note). 
Havana  Commercial  Co.  v.  Nichols, 
155  Fed.  302-1907  (C.  C.  S.  I).  N. 
Y.),  Lacombe,  J.  While  mere  de- 
lay will  not  defeat  the  remedy  by 
injunction,  it  may  be  sufficient 
ground  for  denying  a  preliminary  in- 
junction. Here  the  defendants  al- 
leged that  they  had  sold  their  goods 
under  the  brand  complained  of  for 
nineteen  years,  and  although  com- 
plainant assei'ted  that  this  was  with- 
out the  knowledge  of  itself  or  its 
predecessors,  the  court  deferred  the 
determination  of  all  questions  until 
final  hearing.  Beard  v.  Turner,  13 
L.  T.  N.  S.  747-18G6.  After  decid- 
ing against  plaintiff  on  the  merits, 
the  Vice-Chancellor  deals  with  the 
defense  of  laches  and  expresses  the 
opinion  that  two  years'  delay  in 
bringing  suit  would  preclude  the  re- 
covery of  damages.  (The  language 
may  be  broad  enough  to  include  in- 
junctive relief  as  also  cut  off  by  the 
delay,  but  the  case  cannot  be  treated 
as  an  authority  to  that  effect). 


Defenses.  513 

circumstances  of  the  case  the  other  party  may  fairly  infer 
that  he  has  waived  or  abandoned  his  right. ' ' tt 

"  Where  a  person  tacitly  encourages  an  act  to  be  done,  he 
cannot  afterward  exercise  his  legal  right  in  opposition  to 
such  consent,  if  his  conduct  or  acts  of  encouragement  in- 
duced the  other  party  to  change  his  position  so  that  he 
will  be  pecuniarily  prejudiced  by  assertion  of  such  adversary 
claim. ' ' 49 

As  distinguished  from  laches,  in  the  sense  of  mere  delay, 
we  have  frequently  the  case  in  which,  during  the  delay,  rights 
have  grown  up  or  equities  arisen  which  make  it  inequitable  to 
admit  the  complainant's  claims.  In  this  case  the  defense  may 
most  conveniently  be  termed  that  of  acquiescence.  It  involves 
a  principle  akin  to  that  of  estoppel.  The  proprietor  of  the 
name  or  mark  has  stood  by  and  allowed  others  to  use  it  under 
such  circumstances  and  for  such  a  time  that  his  consent,  or 
at  least  an  attitude  of  noninterference  on  his  part,  may  rea- 
sonably be  inferred.  Others  have  acted  upon  the  faith  of  his 
silence  and  inaction.  At  the  outset  the  name  or  mark  was  un- 
questionably his  own,  but  he  has  allowed  the  public  gradually 
to  appropriate  it,  until  at  last  it  is  publici  juris. 

Two  leading  examples  of  the  loss  of  the  exclusive  right  to  use 
an  originally  distinctive  name  through  acquiescing  in  a  gen- 
eral appropriation  of  it,  may  be  found  in  the  Vichy  and 
Hunyadi  cases,  decided  not  long  since  by  the  United  States 
Supreme  Court. 

The  proprietors  of  the  original  French  Vichy  mineral  water 
which  was  named  from  the  place  where  the  springs  were 
located,  had  failed  to  interfere  in  any  way,  while,  for  twenty- 
five  years,  the  defendant  had  widely  sold  its  "  Saratoga 
Vichy,"  and  various  artificial  waters  were  everywhere  sold 
under  the  name  of  Vichy.  It  was  held,  that  knowledge  of  these 
infringements  was  to  be  presumed  from  their  notoriety,  and 
that  the  proprietors  of  the  original  Vichy  had  allowed  the  name 
to  become  general  and  indicative  of  the  character  of  the  water. 

"Rapalje   &   Lawrence's   L.   Diet.  "Swain  v.  Seamens,  9  Wall.  254- 

eited  in  Scott  v.  Thackery,  89  Cal.      1869;  76  U.  S.  254;  19  L.  ed.  554. 
258-62. 

33   " 


514  Unfair  Business  Competition. 

"A  clearer  case  of  laclies,"  says  the  court,  "  could  hardly 
exist."50  It  will  be  noted  that  in  this  case,  a  sovereign  state 
was  the  complainant,  and  it  was  objected  that  the  defense  of 
laches  was  not  available  against  a  sovereignty.  On  this  point 
it  was  considered  that  where  a  foreign  sovereign  of  state  sues 
in  our  court  on  a  private  or  proprietary  right,  the  rule  nullum 
tenipus  occurrit  regi  cannot  be  invoked,  but  that  the  sovereign 
is  subjected  like  any  other  party  to  the  defense  of  laches,  and 
that  this  is  certainly  so  when  the  sovereign  is  practically  a 
nominal  party,  suing  for  the  benefit  of  an  individual. 

The  rights  of  the  owners  of  the  Hunyadi  waters  were  con- 
sidered in  Saxlehner  v.  Nielsen;'1  where  the  original  proprietor 
of  the  name  "  Hunyadi  "  as  applied  to  mineral  waters,  having 
for  years  allowed  the  name  to  be  used  for  other  Hungarian 
waters,  was  held  to  have  lost  his  exclusive  right.  For  facts 
in  detail,  see  Saxlehner  v.  Eisner  &  Mendelson  Co.52 

"  Where  an  injunction  has  been  granted  by  this  court,  there 
must,  in  order  to  deprive  the  party  who  has  obtained  the  in- 
junction of  the  right  to  move  for  committal  upon  the  breach 
of  it,  be  a  case  made  out  almost  amounting  to  such  a  license  to 
the  party  enjoined  to  do  the  act  enjoined  against  as  would 
entitle  him  to  maintain  a  bill  against  others  for  doing  that  act. 
The  party  enjoined  must,  I  think,  show  such  acquiescence  as 
would  be  sufficient  to  create  new  right  in  him."  53 

§  289.  Test  by  which  to  Determine  Acquiescence. — A  lead- 
ing English  case  on  the  subject  is  Ford  v.  Foster™  which  lays 
down  a  rule  by  which  to  ascertain  whether  as  a  result  of  the 

M  French     Republic     v.     Saratoga  manner  for  some  twenty  yeai's,  but, 

Vichy  Spring  Co.,  191  XL  S.  427-37-  as   they  claimed,   without   knowledge 

1903 ;  48  L.  ed.  247 ;  24  Sup.  Ct.  145.  of  complainant's  rights,  on  learning 

"179  U.  S.  43-1900;  44  L.  ed.  77;  of    which    they    had    desisted.      The 

21  Sup.  Ct.  16.  court,   finding   no   sufficient    evidence 

BJ 179  U.  S.  19.     Gilka  v.  Mihalo-  that  complainants  had   had  any  no- 

vitch,     50     Fed.     427-1892     (C.     C.  tice  of   the  infringement   until  very 

Ohio).     Complainants,  who  had  long  recently,  held  that  laches  was  not  to 

sold    a    cordial    known    as    "  Gilka-  be  imputed  to  them. 

Kummel,"   sought  to  enjoin  defend-  M  Rodgers  v.  Nowill,  3  De  G.  M.  & 

ants  from  selling  in  another  part  of  G.  614-19-1853. 

the    country     an     imitation     cordial.  M  L.  R.  7  Ch.  App.  611-1872. 
Defendants  had  been  selling  in  this 


DEFENSES.  515 

inaction  and  presumable  permission  of  the  original  owner  a 
name  or  mark  has  really  become  public  property,  so  that  it  is 
too  late  for  him  to  assert  his  original  right.  Mellish,  L.  J., 
there  says:  "  Then  what  is  the  test  by  which  a  decision  is  to  be 
arrived  at  whether  a  word  which  was  originally  a  trade-mark 
has  become  publici  juris?  I  think  the  test  must  be,  whether  the 
wse  of  it  by  other  persons  is  still  calculated  to  deceive  the  pub- 
lic, whether  it  may  still  have  the  effect  of  inducing  the  public 
to  buy  goods  not  made  by  the  original  owner  of  the  trade-mark 
as  if  they  were  his  goods.  If  the  mark  has  come  to  be  so  public 
and  in  such  universal  use  that  nobody  can  be  deceived  by  the 
use  of  it,  and  can  be  induced  from  the  use  of  it  to  believe  that 
he  is  buying  the  goods  of  the  original  trader,  it  appears  to  me, 
however  hard  to  some  extent  it  may  appear  on  the  trader,  yet 
practically,  as  the  right  to  a  trade-mark  is  simply  a  right  to 
prevent  the  trader  from  being  cheated  by  other  persons,  goods 
being  sold  as  his  goods  through  the  fraudulent  use  of  the  trade- 
mark, the  right  to  the  trade-mark  must  be  gone  "  (at  p.  628). 

The  test,  therefore,  is  whether  or  no  the  public  will  be  so 
deceived,  by  a  general  use  of  the  name  or  mark  as  to  believe 
when  they  buy  goods  bearing  that  name  or  mark  they  are  get- 
ting the  particular  goods  of  the  one  who  first  used  the  mark. 
If  the  name  has  become  dissociated  from  the  personality  or 
ownership  of  an  individual,  it  is  henceforth  the  general  generic 
name  of  the  article. 

In  the  "  Yorkshire  Relish  "  case,  Powell  v.  Birmingham 
Vinegar  Brewery  Co.,55  the  court  said:  "  There  is  another  way 
in  which  a  name  originally  a  good  trade  name  may  lose  its 
character  and  become  publici  juris,  i.  e.,  where  the  first  person 
using  the  name  does  not  claim  the  right  to  prevent  others  from 
using  it,  and  allows  other  persons  to  use  it  without  complaint. 
The  name  then  comes  to  denote  the  article  and  nothing  more ; 
the  name  becomes  publici  juris  and  anyone  who  is  at  liberty  to 
make  the  article,  can  call  it  by  the  name  by  which  it  is  usually 
known.  Ford  v.  Foster  (supra)  is  the  leading  authority  on 
this  head.  No  name,  however,  can  become  publici  juris  in  this 
way,  so  long  as  the  person  originally  entitled  to  the  use  of  the 

M2  Ch.  54-1896.- 


516  Unfair  Business  Competition. 

name  asserts  his  rights  in  that  respect.  Moreover  it  is  for 
those  who  assert  that  a  trade  name  has  become  publici  juris, 
to  prove  it  "  (p.  73). 

The  fact  that  there  has  been  long  continued  use  of  the  name, 
or  a  similar  name,  mark,  or  dress  by  others  than  the  claimant, 
at  all  events  throws  the  burden  upon  him  to  prove  the  exclusive 
right,  and  the  larger  and  more  general  the  use  by  others  has 
been,  the  stronger  will  be  the  evidence  required  of  him. 

Lord  Kay:  "  Where  persons  come  and  object,  in  whatever 
form,  to  the  use  of  a  trade-mark  which  has  been  used  for  a 
great  number  of  years,  it  does  not  follow,  as  a  matter  of  course, 
that  the  use  for  a  great  number  of  years  is  an  absolute  bar  to 
obtaining  an  injunction;  but,  most  certainly,  it  throws  on 
those  who  object  to  the  use,  the  onus  of  proving  that  it  was 
originally  a  fraudulent  use,  and  that  it  is  calculated  to  deceive ; 
and  very  much  stronger  evidence  is  required  where  there  has 
been  a  longer  use."56 

As  these  cases  just  cited  state,  long  general  use  is  seldom  re- 
garded as  conclusive  on  the  rights  of  the  original  owner,  but 
merely  throws  a  burden  proportionate  to  the  length  of  the  use 
on  the  owner  in  asserting  a  right  to  the  mark.  In  fact,  certain 
cases  say  that  mere  delay,  "  procrastination  "  as  the  United 
States  Supreme  Court  puts  it,57  may  be  ground  for  denial  of 
an  injunction. 

While,  in  general,  mere  delay  in  the  enforcement  of  a  clear 
right  against  one  who  infringes  a  trade-mark  or  is  guilty  of 
unfair  competition  does  not  bar  an  action  for  an  injunction, 
yet  long  delay  under  circumstances  importing  acquiescence  in 
the  acts  complained  of  will  preclude  injunctive  relief.  This 
was  applied  in  a  case  where  for  eight  years  there  had  been 
acquiescence  without  objection  and  with  knowledge  of  the 
facts.58 

"  In  re  Beaton,  L.  R.  27  Ch.  Div.  M  Prince's    Metallic    Paint    Co.    v. 

570-76-1884.  Prince  Mfg.   Co.,  57  Fed.  938-1893 

"Menendez    v.    Bolt,    128    U.    S.       (C.  C.  A.  3d  Cir.). 
514-1888;  32  L.  ed.  526;  9  Sup.  Ct. 
143. 


INDEX. 


ABANDONMENT 

question  of  intent,  503. 
what  constitutes,  50-1. 

ABBREVIATIONS 

of  corporate  names,  204,  218. 
of  names  of  merchandise,  275. 
catchwords,  family  names  as,  148,  161. 
surnames,  as  "  Huyler  s,"  "  Hire's,"  etc.,  148. 

ABSTRACT  NAMES 

of  objects,  family  names  or  surnames  may  be  used  for,  144. 
differ  from  business  names,  165. 
geographic  names  may  be  used  for,  252. 

ACCOUNT  OF  SALES 

ordered  kept  by  defendant  when  injunction  not  granted,  447. 

ACCOUNTING 

directed  of  fraudulent  sale  of  goods  made  by  secret  process,  381. 

for  profits,  457. 

refused  when  injunction  denied,  462. 

for  profits,  right  to,  barred  by  laches,  457,  510. 

material  delay  bars  right  to,  509. 

when  not  ordered,  461,  462. 

effect  of  silence  or  acquiescence  on,  507. 

ACQUIESCENCE 

no  presumption  of,  arises  from  exclusive  right,  509. 

test  of,  514. 

distinguished  from  laches,  513. 

in  sense  of  inaction,  on  which  others  have  right  to  rely,  512. 

(See  Laches.) 
may  grant  a  revocable  license,  does  not  preclude  one  from  asserting 

his  rights,  507.    • 

ACQUIRED  MEANING 

(See  Secondary  Meaning.) 

517 


518  Index. 

ACTION 

features  of,  as  to  label,  331. 

right  of,  based  on  injury  to  a  man's  trade,  business  or  calling,  349. 
who  may  sue  for  misuse  of  geographic  name,  228. 
requisites  of  an  action  for  interference  with  contract,  3G9. 
for  unfair  competition  sounds  in  tort,  442. 
(See  Remedies.) 

ADDRESSES 

of  companies  that  have  been  consolidated,  213. 
street  addresses,  186. 

ADJOINING 

stores,  fraud  resulting  from,  493. 
(See  Location.) 

ADMINISTRATOR 

of  deceased  partner  may  be  party  plaintiff,  444. 

ADULTERATION 

of  goods,  251. 

ADVERTISING 

right  to  advertise  facts  as  to  skill,  experience,  former  residence,  etc., 

on  selling  out  one's  business,  114. 
right  of  sons  to  advertise  their  connection  in  business  with  father 

who  has  sold  his  business  and  is  dead,  157. 
effect  of,  64. 

on  value,  22. 
matter,  misrepresentation  in,  495. 
development  of,  effect  of,  125. 

ADVERTISEMENTS 

libelous,  injunctions  against,  392. 

AGENTS 

fraudulent  acts  of,  principal  not  excused  by  his  orders  against  such 
acts,  61. 

may  be  made  defendants  although  proprietor  or  principal  is  not, 
444. 

use  of  material  obtained  for  a  principal  may  not  be  used  in  com- 
petition against  him  by  agent,  435. 

defense  that  defendant  acted  as  agent,  not  as  principal,  473. 

effect  of  specific  orders  given  to  agent  to  act  fairly,  61. 


Index.  519 

APPEARANCE 

general,  of  an  article  with  its  dress  or  get-up  important,  312. 

ARCHITECTURE 

form  or  style  of  buildings,  fraud  in  use  of,  329. 

ARTIFICIAL 

or  made-up  names,  264,  265. 

ARTISTS 

names  of,  used  in  business  not  transferable,  95. 

ASSIGNMENTS 

(See  Transfer.) 
for  benefit  of  creditors,  transfers  of  names,  marks,  etc.,  in,  107. 
of  mark  or  name,  must  be  incidental  to  transfer  of  business,  104. 
of  secret  carries  right  to  protect  it,  438. 
trade  names  and  marks  not  assignable  in  gross,  102. 
assignee  may  not  sell  assignors  labels  in  bulk,  107. 
names  not  assignable  in  gross,  102,  104. 

ASSOCIATION 

use  of  word  by  concern  not  incorporated,  217. 

ATTORNEY 

sale  of  practice,  112. 

AUCTION 

purchase  of  good-will  at,  119. 

BAGS 

for  tobacco,  similarity  in,  344. 

use  of  marked,  already  once  used,  325. 

" BAKER " 

chocolate  cases,  132  et  seq. 

BANKRUPT 

may  not  resume  use  of  his  name  sold  in  bankruptcy  as  trade  name, 
107. 

BANKRUPTCY 

transfer  of  names,  marks,  good-will,  etc.,  in,  107. 


520  Index. 

BOND 

given  pending  trial,  448. 

BOOKS,  ETC. 

names  of,  189,  193,  194. 
reprints  of,  fraud  in,  195. 

BOTTLES 

(See  List  of  Subjects,  p.  305.) 
copying  form  of,  309-322. 
copying  capsule  on,  310. 
copying  shape  of,  etc.,  322. 
refilling  those  already  used,  323,  325,  326-333. 
use  of  falsely  marked,  325. 

stock  bottles,  314. 
false  labels  on,  324. 

BOTTLING 

goods  bought  in  bulk,  fraud  in,  324. 

BOX 

copying  form  of,  310. 

BOXING 

goods  fraudulently,  337. 

BOYCOTT 

(See  Introduction,  p.  5.) 

BREWERY 

right  to  name,  on  sale  of,  100. 

BREACH  OF  CONTRACT 

equity  protects  against,  38. 

procuring.     (See  Interference  with  Contract.) 

BUILDINGS 

decorated  in  an  individual  way  are  sometimes  signs,  184. 
fraudulent  get-up  or  decoration  of,  etc.,  329. 
names  of,  177. 

BULK 

sale  of  goods  in,  for  bottling,  fraud  in,  324. 

of  labels  of  assignor  by  assignee  in  bulk  unfair,  107. 


Index.  521 

"  BURGESS  v.  BURGESS  " 

effect  of  decision  in,  128. 

BUSINESS 

absolute  right  to  enter  any,  not  barred  by  fact  one's  name  already 

in  use  by  another,  130. 
sale  of  a,  rights  of  vendor,  96. 
site,  sale  of,  effect  on  names,  100. 

BUSINESS  NAMES 

distinguished  from  marks,  designs,  devices,  etc.,  164. 
differences  between  them  and  abstract  names  of  objects,  165. 
secondary  meaning  of  semi-geographic  business  names,  170. 
considered  as  transitory  or  personal,  local  or  fixed,  177. 
used  with  phrases  such  as  "  formerly  with,"  "  late  of,"  etc.,  181. 
street  addresses  used  as,  186. 
use  of  suffix  "  &  Co.,"  188. 
names  of  newspapers,  magazines,  etc.,  188. 
names  of  plays,  books,  etc.,  193. 
effect  of  removal  of  business  on,  173. 
libel  and  slander  of,  388. 
miscellaneous,  163. 

secondary  meaning  of,  165.     (See  Secondary  Meaning.) 
(See  Names.) 

BUYING 

where  employer  buys  material,  not  a  trade  secret,  434. 
carelessly,  not  a  test  of  similarity,  74,  contra,  129. 
who  is  an  ordinary  buyer,  75,  77. 

CAMEL'S  HAIR 

belting  cases,  166. 

CAPSULE 

on  bottles,  copying,  310. 

CARTONS,  WRAPPERS,  ETC. 

(See  List,  p.  305.) 
unfair  use  of,  321. 

CATCHWORDS 

(See  Abbreviations.) 
family  names  as,  161. 
use  of  part  of  corporate  name  as,  204,  218. 


522  Index. 

CAUTIONARY 

notice,  use  of,  510. 

CELEBRITY 

or  reputation  gives  ground  for  protection,  35,  36. 

CHANCERY 

courts,  power  of,  to  enjoin  libels  prior  to  English  to  Procedure  Acts. 

CHARITABLE  CORPORATIONS 

names  of.     (See  Corporations.) 

CHEAP  GRADE 

fact  that  defendant  makes  cheaper  goods  than  plaintiff  no  defense, 
466,  467. 

CHEAPNESS 

not  an  offense,  467. 

CHILDREN 

rights  of,  to  family  name,  121,  150. 
right  of,  to  name  of  father,  155,  156,  161. 
(See  Family  Name.) 

CIGAR 

bands,  320. 

CIRCULARS 

issuing,  interference  with  contract  by,  387. 

form  of  one,  held  to  be  proper,  400,  410. 

announcing  business  change,  unfair  use  of,  115. 

giving  notice  of  pendency  of  suit  for  unfair  competition  are  legal, 

411,  417. 
restraining  issuance  of,  403. 

must  bad  faith  be  shown  to  warrant  injunction  against?  408. 
use  of  cautionary,  403,  570. 
placards,  417. 
notices,  115. 

CITIES 

names  of,  right  to  use,  241-243,  244. 

CITIZENSHIP 

of  parties,  effect  on  jurisdiction  in  unfair  competition  cases,  441, 
442. 


Index.  523 

CLEAN  HANDS 

defense  of,  must  be  based  on  conditions  at  time  of  suit,  479. 
plaintiff  must  come  into  court  with,  470,  479,  481,  499. 

CLERKS 

(See  Employees.) 

CLUBS 

unincorporated,  names  of,  223. 

COLOR 

injunctions  against,  453. 

alone  not  a  trade-mark,  82. 

copying  a,  unfairly,  303. 

cannot  be  monopolized,  82. 

combination  of,  with  other  features,  producing  likeness  enjoined,  83, 

310. 
form  of  decree  against  use  of,  453,  454. 
may  be  appropriated   by  one  person  in  combination   with   other 

features  of  an  article,  309  et  seq. 
mere  diversity  of,  in  get-up  of  goods  not  controlling  as  to  fraud,  308. 
may  be  used  to  make  an  otherwise  proper  use  fraudulent,  309. 
simulation  of,  82,  282. 
different  colored  rope  strands,  right  to  use,  304. 

COMBINATION 

of  companies,  effect  on  corporate  name,  213. 

of  color,  form,  size,  etc.,  protected  against  unfair  competition,  311. 

COMITY 

relative  rights  of  foreign  and  domestic  corporations  as  to  name,  200. 

COMMON 

features  common  to  a  trade,  not  protected,  312,  313. 

COMMON  LAW 

is  basis  of  law  of  unfair  competition,  5,  6. 

gives  right  of  action  on  injury  to  a  man's  trade,  business  or  calling. 
348,  349. 

COMMON  USE 

defense  that  article  is  in,  465. 

that  a  form  is  used  commonly  in  a  trade,  313. 

resemblance.of  features  in,  314. 


524  Index. 

" COMPANY " 

use  of  word  by  concern  not  incorporated,  216. 

COMPARISON 

of  articles.     (See  Similarity.) 

COMPETITION 

definition,  20. 

combining  to  procure  discharge  of  fellow  workmen  is  not,  371. 
distance  between  stands  of  competitors,  80.      (See  Locality  and 
Distance.) 

limitation  of  freedom  of.  347. 

COMPETITORS 

interference  with  contracts  of,  347. 

distance  between,  effect  on  question  of  similarity,  80. 

CONCEALMENT 

of  part  of  label  or  name,  effect  of,  319. 

CONCURRENCE 

definition,  de  loyale,  French  term  for  unfair  competition,  29. 

CONDITIONAL 

sale  of  goods  made  by  secret  formula,  421. 

CONFIDENTIAL 

relations,  law  of,  418. 

information.     (See  Secrets.) 

relation  of  employer  and  employee,  what  is,  432,  434. 

CONSENT 

not  to  be  presumed  from  silence  of  owner  of  mark  or  name  used 

without  right  by  another,  507. 
inferred  from  acquiescence  may  be  withdrawn,  507. 

CONSOLIDATION 

of  company  or  corporations,  effect  on  name,  213. 

CONSTRUCTION 

copying  features,  essential  to,  261,  285. 
names  descriptive  of,  261. 

CONSUMERS 

export  of  goods  for  foreign  consumption,  effect  of  that  fact  on 
names  of  <roods,  175. 


Index.  525 

CONTAINERS 

refilling  those  already  used  once,  323. 
use  of  second-hand  or  used,  325. 

CONTEMPT 

of  court  for  refusal  or  failure  to  obey  injunction,  462. 

CONTRACT 

a  binding  moral  obligation,  369. 
breach  of,  is  there  moral  justification  for?  369. 
partly  concluded  by  salesman  prior  to  his  discharge,  belongs  to  em- 
ployer, 436. 
to  sell  only  to  specified  persons,  interference  with,  377. 

CONTRIBUTORY 

acts,  to  unfair  acts,  41,  470. 

COPY 

right  to  copy  exactly  goods  of  others,  296. 

COPYING 

(See  List,  p.  285.) 
a  collocation  of  features,  311. 
a  single  feature  or  part,  293. 
a  name  exactly,  265. 
entire  article  "of  rival  and  placing  one's  own  name  on  copy,  effect 

of,  292. 
single  feature  of  dress,  color,  etc.,  309. 
whole  article,  287. 

features  necessary  to  construction  of  an  article,  285. 
distinguishing  features  of  article  as  a  whole,  286-343. 
bottles  of  a  competitor,  322. 
making  a  facsimile,  287. 
a  single  part  or  feature,  293-309. 
repair  parts,  294. 
patented  articles,  298. 
color,  303. 

duty  to  differentiate  one's  goods  from  those  already  in  market,  291. 
identical  name  of  competitor,  265. 

COPYRIGHT 

right  to  enjoin  after  expiration  of,  195,  note  43. 
of  labels,  effect  of  not  procuring,  331. 


526  Index. 

"  COPYRIGHTED  " 

misrepresentation  in  use  of  the  word,  494,  496. 

CORPORATE  NAMES 

(See  List,  p.  197.) 

similarity  of,  to  partnership  names  and  differences,  197. 

corporation  not  necessary  party  defendant  in  action  against  indi- 
viduals doing  business  under,  443. 

duty  of  incorporators  to  avoid  confusion  in  choosing,  154,  198,  note. 

false  or  misleading  use  of,  221. 

State  charters,  effect  on,  198,  206. 

stockholders',  rights  of  retiring  to,  109. 

by  incorporating,  a  business,  gains  no  better  rights  as  to  the  name 
which  its  incorporators  had  been  using,  as  a  partnership  or  other- 
wise, 199. 

charitable  corporations,  names  of,  202. 

ground  of  protection  of  name  of,  against  unfair  use,  200. 

claiming  falsely  to  be  a  corporation,  502. 

comity  as  to  rights  to  use  a  name,  200. 

consolidation  of,  effect  of  on  names,  213. 

dissolution,  right  to  name,  in,  201. 

domestic,  rights  of,  as  to  name  as  against  foreign,  205. 

duty  of  incorporators  as  to  choice  of  name,  214. 
to  differentiate  corporate  names,  154,  206. 

executive  officers  may  be  made  parties  defendant,  443. 

family  name,  effect  of  use  of,  in  corporate  name,  155,  207. 

use  of,  as  corporate  name    without  consent  of    person  bearing 


name, 


999 


rights  of  foreign  corporation  as  to  name  borne  by  domestic  com- 
pany, within  limits  of  the  home  State,  200,  201,  note  5. 

must  yield  to  domestic  corporations  as  to  name,  200. 

abbreviation  of,  204. 

affirmative  duty  on  incorporators  to  differentiate  name  from  existing 
names,  206. 

choosing,  207,  208. 

intention  in  selecting,  controls,  210,  note  21. 

not  trade-mark,  204. 

protected  by  unfair  competition,  204. 

names  of  incorporated  fraternal  societies,  204. 

names  of  unincorporated  societies,  etc.,  223. 

adoption  by  corporation  of  name  used  by  individual  or  partnership, 
207. 


Index.  527 

CORPORATE  NAMES  —  Continued. 

priority  in  time  of  use  of,  215. 

use  of  name  "  works,"  "  company,"  etc.,  by  unincorporated  concerns, 
216. 

similarity  of,  what  is,  224. 

right  to  use  family  name  not  given  by  merely  getting  permission  of 
person  bearing  name,  210. 

right  of  incorporator  to  use  his  own  name  in,  209. 

used  as  trade  catchwords  or  nicknames,  205,  218. 

should  be  differentiated  from  partnership  names  as  well  as  corpo- 
rate names,  207. 

persons  controlling,  as  defendants  jointly  with  corporation,  444. 

priority  in  organization,  effect  on  name,  200. 

purchase  of  right  to  use  a  name  similar  to  one  already  in  use,  210. 
use  of  names,   215. 

registration  of  under  State  laws,  198. 

right  to  use  name  of  a  stockholder,  extent  of,  211,  212. 

stockholders  not  proper  parties  defendant  in  action  against,  444. 
rights  of,  to  use  family  name  in  corporate  name,  218. 
outgoing  rights  in  corporate  name,   109,  217. 

use  of  part  of  corporate  name  as  catchword  or  nickname,  218. 

use  of  name  of  one  of  incorporators  as  part  of,  may  be  fraudulent, 
214. 

CORPORATION 

falsely  claiming  to  be,  502. 

CORRESPONDENTS 

list  of,  belonging  to  a  business  house,  part  of  good-will,  90. 

COST 

as  element  of  damage,  459. 

of  manufacture  deducted  from  profits,  461. 

COURT 

disclosure  of  secret  in,  effect  of,  424. 

does  not  pass  on  defendants  plans  to  correct  his  unfair  acts,  452. 

contempt  of,  462. 

CUSTOMERS 

differences  in  character  of,  to  be  considered,  74,  75,  77. 
inducing  them  to  cease  trading  with  another  dealer  enjoined,  361. 
interference  with  contract  of  rivals  by  fnlse  representations  to,  386. 
list   of,   fraudulently   obtained,   may   be   ordered   to    be    destroyed, 
439,  440. 


528  Index. 

CUSTOMERS  —  Continued, 
list  of  —  Continued. 

is  a  trade  secret,  119,  438. 

is  part  of  good-will,  90. 
right  of  vendor  to  solicit,  after  a  sale  of  business,  96,  111. 
right  to  enjoin  issuance  of  circulars  threatening  prosecution,  403. 
soliciting  by  former  partner,  110,  114,  115,  note  37. 

by  retiring  stockholder  or  partner,  110,  111. 
classes  of  purchasers  that  the  law  protects,  75. 
have  buyers  a  right  to  be  careless,  77-129,  336. 

DAMAGES 

when  awarded,  -157. 

election  between  suing  for  at  law,  and  equity  petition  for  account- 
ing for  profits,  458. 
exemplary,  459. 
elements  of,  458. 
measure  or  elements  of,  458. 

plaintiff's  losses  to  be  computed  in  reckoning  profits,  461. 
profits,  cost  of  manufacture,  deducted  from,  461. 

deduction  of  expenses  of  salesmen,  460. 
when  interest  on  computed,  462. 
injury  to  reputation  of  an  article  to  be  considered,  458. 

DEALERS 

talk,  misrepresentation  in,  498. 

DEATH 

of  person  whose  name  is  part  of  trade-name,  effect  of,  105. 
of  partner,  effect  on  name,  119. 

effect  on  use  of  his  name  and  portrait,  105. 
of  owner  of  secret,  effect  of,  427. 

DECEIT 

actual,  proof  of  unnecessary,  but  valuable,  65. 

need  not  be  shown  to  warrant  injunction  issuing,  445. 
shown  by  fact  that  goods  are  likely  to  deceive,  not  by  purchaser's 

state  of  mind,  56. 
of  ultimate  purchaser  not  jobber,  is  important  question,  81. 

DECREE 

correcting  confusing  use  of  names,  453. 
final  as  to  corporate  name,  455,  456. 

as  to  use  of  partnership  names,  456. 

form  of,  451. 


Index.  529 

DECREE  —  Continued. 

final  —  Continued. 

should  not  specify  acts  which  defendant  proposes  to  adopt  to 
correct  his  unfair  acts,  452. 
form  of,  correcting  unfair  use  of  form,  size,  shape,  etc.,  454. 
form  of,  against  unfair  use  of  a  color,  453,  454. 

DEFENDANTS. 

all  acts  of,  should  be  considered  together  and  not  taken  singly,  453. 
(See  Parties.) 

DEFENSE 

that  no  attempt  was  made  to  imitate,  50. 

DEFENSES. 

(For  list  of  various  defenses,  see  list  at  head  of  chapter,  pp.  463, 
464.) 

DEFINITIONS 

technical  trade-marks,  3. 

trade-mark,  7,  104,  260. 

secret,  418. 

unfair  competition,  24,  30,  209. 

concurrence  de  loyal,  29. 

good-will,  89. 

names  idem  sonans,  267,  369. 

intent  to  deceive,  54. 

laches,  505,  513. 

acquiescence,  513. 

malice,  355,  356. 

passing-off,  29. 

similarity,  70-72. 

DELAY 

in  bringing  suit,  when  warrants  presumption  of  intent  to  abandon, 
504. 

instances  of,  which  were  held  to  bar  right  to  preliminary  injunc- 
tion, 511. 

in  suing,  when  considered  as  laches,  507. 

material,  bars  right  to  an  accounting,  509. 

DELIVERY  ROUTE 

a  trade  secret,  419. 
34 


530  Index. 

DENIAL 

of  intent  to  defraud  will  not  avail  defendant,  59. 

DESCENDANTS 

right  of,  to  use  ancestor's  name  as  trade-name,  121,  155,  161. 

DESCRIPTIVE  NAMES 

describing  construction,  261. 

DESCRIPTIVE  WORDS 

foreign,  scientific,  or  unfamiliar  words  not,  264. 

DESIGNS 

use  of,  315. 

ignorantly  using  one  already  in  use,  316. 
character  of  property  acquired  in,  23. 
(See  chapter  on  "Dress,"  306.) 

DESTRUCTION 

of  offending  articles,  when  "ordered,  462. 

of  goods,  laches  may  bar  right  to  demand,  511. 

DETAILS 

external,  imitation  of,  79,  282. 
unessential,  misrepresentation  as  to,  492. 
examination  of,  is  not  a  test  of  similarity,  71. 

DEVICES 

unfair  use  of,  315,  343,  258,  note,  46,  335. 
defense  that  it  is  commonly  used,  465. 
(See  chapter  on  "  Dress,"  306.) 

DIFFERENTIATE 

duty  to,  as  to  name,  301. 

duty  to  differentiate  one's  goods  from  those  already  in  the  market, 

291. 
duty  of  incorporators  to  differentiate  names  of  corporations,  206,  207. 

DIRECTIONS 

for  use,  copying,  318. 

DIRECTORS 

as  parties  defendant,  443. 


Index.  531 

DISCLOSURE 

of  secret  in  court,  effect  of,  424. 
(See  Secrets,  Publication.) 

DISCONTINUANCE 

of  infringement  before  suit  brought,  may  not  prevent  issuance  of 

injunction,  44G. 
of  use  not  abandonment,  504. 

DISCOVERY 

of  secret,  what  is  a  lawful,  425. 

DISSOLUTION 

corporation,  right  to  corporate  name  in,  201. 
by  death  of  partner,  name,  119. 

(See  Corporate  Names,  Partner,  Partnership.) 

DISTANCE 

between  competitors,  141,  161,  224.     (See  Locality,  see  p.  160.) 

effect  on  names,  224. 

effect  on  question  of  similarity,  80. 

DOMESTIC    CORPORATIONS. 

See  Corporate  Names.) 

DOUBLE 

meaning,  names  having,  276. 

DRESS 

or  get-up  of  goods.     (See  List,  p.  305.) 

degree  of  similarity  in,  calculated  to  deceive,  307. 
classification  of  cases  involving,  315. 

(See  Labels,  Color,  Bottles,  Wrappers,  Cartons,  Boxes,  etc.) 

DRAMA  OR  PLAY 

imitation  of,  32. 

ELECTION 

of  remedy  by  plaintiff,  458. 

EMPLOYEE 

betrayal  of  secret  by,  427  et  seq. 

bound  by  implied  contract  not  to  disclose  secrets,  430. 

definition  of,  as  used  here,  434. 


53'2  Index. 

EMPLOYEE  —  Continued. 

may  be  enjoined  from  breaking  contract  with  employer,  365. 

from  disclosing  trade  secrets,  365. 
may  not  divulge  secrets  after  leaving  employer,  432. 
rights  of,  on  leaving  employment,  217. 

of  one  who  has  left  employer,  to  use  employer's  name,  181. 
secrets  discovered  by,  in  course  of  employment,  right  to  use,  151, 

426,  432  et  seq. 
manager  of  a  business  is  an,  so  far  as  betrayal  of  secrets  is  con- 
cerned, 430. 
interference  with  contracts  of  enjoined,  363. 

ENGLISH 

Procedure  Acts  of  1854  and  1873,  text  of,  389. 
Trade-marks  Act,  effect  of,  6,  7, 

effect  of,  on  old  equity  jurisdiction,  7. 

EQUITY 

'  acts  to  protect  property,  34,  37,  38.     (See  Introduction.) 
early  powers  to  issue  injunctions  against  libel  and  slander,  391. 
jurisdiction  derived  from  power  to  protect  helpless  persons,  38. 
jurisdiction  over  rights  in  names  and  marks  acquired  by  use,  24. 
power  to  regulate  one's  use  of  his  own  name,  137. 
power  of,  to  limit  use  of  geographic  name,  241. 
protects  against  personal  wrongs  37,  38. 
protects  right  to  privacy,  39. 
recognizes  change  of  conditions  of  life,  39. 
will  not  define  similarity  exactly,  73. 

"ESTABLISHED  IN" 

use  of  term,  when  unfair,  503. 

ESTOPPEL 

fraud  may  estop  incorporators  from  denying  knowledge  of  defend- 
ants' rights,  212. 

EVIDENCE 

of  intent,  character  of,  66. 

of  similarity,  what  is,  213. 

EXAGGERATION 

in  dealer's  talk,  498. 

not  necessarily  misrepresentation,  480,  487,  498. 


Index.  53'3 

EXPENSES 

of  defendant,  deduction  of,  from  profits,  460. 

EXPERIENCE 

in  business,  right  to  advertise  after  sale  of  a  business,  114. 

EXPERTS 

originating   marks,   held   more   strictly   accountable   for   effect   of 

same  than  others  are,  64. 
deceit  of,  not  test  of  unfair  competition,  31. 

EXPORT 

names  of  goods  intended  for,  175,  243. 

EXPLANATORY 

phrases  do  not  cure  unfair  similarity  in  packages,  344. 

and  words,  use  of  with  family  names,  122,  130,  140,  153,  154. 

use  of  ordered  in  preliminary  hearing,  450. 

use  of  full  name  instead  of  a  part,  131. 

use  of  by  descendants  of  one  whose  name  has  been  sold,  122. 

EXTRAVAGANT 

claims  for  goods,  not  misrepresentations,  480,  487,  498. 
dealers  talk,  480,  498. 

FACSIMILE 

making  a,  of  goods  of  another,  287. 
(See  Similarity.) 

FAIR  TRADE 

policy  of  law  to  encourage,  19. 

theory  that  in  these  actions  court  aims  to  protect,  30. 

FALSE 

representation,  388. 

representations  to  customers  to  procure  breach  of  contract,  386. 

marks  on  goods  not  necessary  to  relief,  468. 

claim  to  be  a  corporation,  502. 

or  misleading  name,  use  of  for  a  corporation,  221. 

FAMILY  NAME 

or  surname  as  trade-name.    See  list  at  124. 
nature  of  right  to  use  one's  own  name,  125. 
as  nickname-  or  catchword,  148,  161. 


53-4:  Index. 

FAMILY  NAME— Continued. 
Baker  chocolate  cases,  134. 

changing  one's  name  voluntarily,  may  be  enjoined,  152. 
decisions  ordering  use  of  full  name,  instead  of  surname  alone,  131. 
equity  has  power  to  direct  use  of  explanatory  words  with,  130. 
injunction  against  unfair  use  of  form  of,  454. 
may  become  associated  with  quality  instead  of  with  a  personality, 

124. 
priority  in  use,  not  resulting  in  secondary  meaning,  146. 
rights  of  descendants  as  to,  155,  159,  1GU. 

right  to  use,  relation  of  to  loss  of  business  by  unfair  use  of  name  by 
another,  131. 
in  business,  126  et  seq. 
is  a  question  of  priority,  not  of  wideness  of  repute  of  name, 

146. 
a  natural  right,  130. 

one's  own  name,  125,  138,  et  seq.  176,  219. 
one's  own  name  in  corporate  name,  209. 
voluntary  change  of,  152. 
use  of,  to  name  a  corporation,  155,  207,  209. 
Rogers  silver  cases,  134  et  seq. 

sale  of  name  in  bankruptcy,  or  assignment  for  creditors,  107. 
sale  of  right  to  use  one's  own  name  for  unfair  use,  152,  210. 
secondary  or  acquired  meaning  of,  138. 
right  of  son  and  father  to,  155,  159,  160. 
transfer  of,  cannot  be  made  for  unfair  use,  152,  210. 
use  of,  without  consent  of  owner,  2*32. 
use,  with  explanations,  130,  140. 
use  of,  regulated  by  equity,  137. 
what  constitutes  a  passing  off  of,  125. 
right  of  widow  to  husband's  name,  160. 
may  become  abstract  name  of  object,  144. 
surname  acquired  otherwise  than  by  descent,  150. 
surname,  unfair  use  of,  cured  by  use  of  full  name,  131. 
use  of,  by  corporation  in  which  there  is  no  one  bearing  that  name, 

223. 
what  constitutes  a  passing-off  by  use  of  surname,  125. 
surnames  which  by  usage  become  abstract  names,  144. 
fortuitous  identity  of   defendant's  and   plaintiff's  names  may  be 
medium  of  fraud,  147,  note  44. 

FATHER  AND  SON 

use  of  same  name  by,  in  same  line  of  business,  159. 


Index.  535 

FEATURES 

copying  a  collocation  of,  311,  313. 

common  to  a  trade,  313. 

distinguishing,  copying,  286. 

resemblance  in  several,  313,  343. 

cases  showing  unfair  use  of  general  features  of  packages,  etc.,  343. 

FEDERAL  COURTS 

jurisdiction  in  unfair  competition  cases,  441,  442. 
over  acts  done  in  foreign  countries,  442. 

"FINEST  GOODS  MADE," 

use  of  phrase,  499. 

FOREIGN 

countries,  unfair  acts  done  in,  jurisdiction  of  U.  S.  courts  over,  442. 

language,  names  in,  175. 

market,  effect  of  on  use  of  names,  243. 

words  as  names  of  goods,  274. 

FOREIGN  CORPORATIONS. 

(See  Corporate  Names.) 

FORM 

(See  Shape.) 
imitation  of,  284. 

defense  that  form  in  question  is  in  common  use,  465. 
will  be  protected  in  combination  with  other  features  of  an  article, 

311,  312,  343. 
of  patented  articles,  use  of  on  expiration  of  patent,  299. 
in  dress  or  get-up  copied,  but  nothing  else  copied,  309. 

"FORMERLY 
of,"  183  note, 
of,"  used  as  to  locality,  114,  note  30. 

operator  at,"  182. 
with,"  141,  181. 

FORMS 

of  final  decree,  451. 

form  of  decree  directing  correction  of  unfair  use  of,  453,  454. 

final  decree  against  corporate  name,  455. 

final  decree  against  use  of  family  name,  454. 

petition,  prayer  in,  451. 


536  Index. 

FORMS  — Continued. 

circular  or  notice  of  pendency  of  suit,  410. 
injunction  against  use  of  a  color,  form,  etc.,  454. 

against  use  of  name  of,  456. 

against  ex-partner,  456. 

against  former  member  of  corporation,  456. 

against  owner  of  patent,  456. 

FRATERNAL 

societies,  names  of,  204. 

FRAUD 

elements  of,  in  use  of  names  and  marks,  17. 

FRAUDULENT  INTENT 
(See  Intent.) 

"  FROM  " 

use  of  word,  181. 

GENERAL  IMPRESSION 

is  test  of  what  is  similarity,  71. 

GENERAL  RESEMBLANCE 

of  goods,  cases  involving,  341,  343. 

"  GENUINE  " 

use  of  word,  501. 

GEOGRAPHIC  OR  PLACE  NAMES 

secondary  meaning  of,  231,  232,  248.     (See  Secondaky  Meaning.) 

similarity  of,  degree  of  resemblance  necessary  in,  236. 

association  of,  with  locality  bearing  name  must  be  close,  231. 

who  may  sue  on  behalf  of  several  using,  228. 

arbitrary  use  of,  227,  248,  252. 

as  trade  names  must  be  used  truthfully,  254. 

indicating  quality,  227,  241,  256. 

indicating  origin  falsely,  226-236. 

indicating  source  falsely,  236. 

power  of  equity  to  limit  use  of,  241. 

priority  in  use  of,  227. 

kinds  of,  etc.,  see  list  of  section  heads,  226. 

extent  of  district  to  which  name  applies,  233. 


Index.  537 

GEOGRAPHIC    OR   PLACE   NAMES— Continued. 

indicating  process  of  manufacture,  226,  242,  247,  note  23. 

may  acquire  abstract  meaning,  235,  248. 

universal  knowledge  of  use  of,  not  necessary  to  protect,  233. 

effect  of  removal  of  business,  173,  174. 

length  of  time  of  use  necessary  to  acquire  secondary  meaning,  235. 

degree  of  resemblance  in,  necessary  to  create  similarity,  236. 

relative  location  of  plants  of  rivals  using  same  name,  effect  of,  239. 

(See  Location.) 
names  of  cities  as,  241. 
effect  of  moving  plant  or  business,  244. 
as  names  of  natural  products,  245. 
may  be  used  arbitrarily  as  trade  names,  252. 
use  of  must  be  truthful  and  fair,  254. 

GET-UP  OF  GOODS 

similarity  of,  basis  of  presumption  of  fraud,  62. 
(See  Dress.) 

GOOD  FAITH 

in  use  of  name,  defendant's  opinion  as  to  use  disregarded,  60. 
required  of  vendors  of  names  and  marks,  105,  301. 

GOODS 

libel  and  slander  of,  388. 
style  of  numerals  used  to  represent,  281. 

substitution  of  inferior,  for  better  grade  in  containers,  324-327. 
fact  that  plaintiff's  goods  are  worthless  or  useless  is  no  defense,  475. 
duty  to  differentiate  one's  goods  from  those  already  in  market,  291. 
(See  Merchandise.) 

GOOD-WILL 

association  of  with  name  of  concern,  119. 

attaching  to  personality,  the  benefit  of  the  public's  preference  for 

one  particular  person,  178,  290,  296. 
colorable  purchase  of,  93. 
definitions,  89. 
in  hotel  name,  178. 
kinds  of,  90. 
local,  90. 
personal,  90. 
attached  to  goods,  90. 
attaching  to_  leased  premises  during  lease,  178. 


538  Index. 

GOOD-WILL—  Continued. 

may  be  passed  off  unfairly,  92. 

of  partnership,  91. 

and  personality,  178,  290,  296. 

of  professional  men,  90,  91. 

of  retail  shop  on  sale  of,  118. 

is  property,  89. 

basis  of  protection  of,  36,  92. 

purchase  of  at  auction.  119. 

recent  increase  in  value  of,  22. 

right  of  son  to  good-will  of  father's  business,  157. 

sale  of,  156,  157. 

unfair  advertisement  of  possession  of,  94. 

HONEST  AND  FAIR  DEALING 

promotion  of,  ground  of  action  of  unfair  competition,  30. 

HOTELS 

names  of,  177,  180. 

right  to  name  of  on  sale  of,  100. 

good-will  in,  178. 

rights  of  lessee  in,  177. 

right  of  owner  of  premises  in,  179. 

lessee's  right  to  increased  value  of  name  ofj  due  to  his  efforts,  179. 

IDEM  SONANS 

names,  what  are,  267,  269. 

IGNORANCE 

plea  of,  43. 

of  plaintiff's  rights  no  defense,  60. 

IMITATION 

of  articles  as  a  whole, 
of  salient  features,  78. 

(See  Simulation  of  Articles  Themselves,    Copying,  Simi- 
larity.) 

" IMPORTED " 

use  of  term,  492. 

INACCURACIES 

minor,  no  defense,  480. 


Index.  539 

INACTION 

or  acquiescence  on  which  others  have  a  right  to  rely,  512. 

INCORPORATION 

effect  gives  no  right  superior  to  what  the  concern  incorporated  had 

prior  thereto,  199. 

INCORPORATORS 

duty  of,  as  to  name,  214. 
(See  Corporate  Names.) 

INDIVIDUAL  RIGHTS 

as  basis  of  unfair  competition,  33. 

INFANTS 

protected  by  equity,  38. 

INFORMATION 

interference  with  contracts  to  furnish,  366. 


INFRINGEMENT 

definition,  40. 

discontinuing  before  suit  is  brought,  effect  of,  446. 

INGREDIENTS 

misrepresentation  as  to,  481,  486. 

must  be  as  to  those  which  are  essential,  486. 


INITIALS 

use  of,  275,  317. 

as  names  of  goods,  277,  281. 

INJUNCTION 

directing  use  of  explanatory  words  or  phrases,  130,  131,  140,  344, 

450. 
against  use  of  family  names,  scope  of,  454. 
before  act  is  committed,  quia  timet,  445. 
English  Procedure  Acts  of  1854,  1873,  effect  on  writ,  389. 
final,  form  and  scope  of,  451. 

may  issue  despite  discontinuance  of  unfair  acts  prior  to  suit,  446. 
not  granted  ex  parte  unless  clear  case  made  out  from  affidavits.  447. 


540  Index. 

INJUNCTION  —  Continued. 

refused   when   defendants   agree   to   discontinue   use   of    offending 

articles  pending  suit,  4-17,  note  18. 
should  issue  against  libel  and  slander  of  trade  names,  etc.,  when 
plaintiff's  rights  are  clear,  411. 

(See  Preliminary  Injunctions  and  Remedy.) 
injury  complained  of  must  be  imminent,  61. 

is  only  effective  remedy  in  these  cases,  348,  405.     (See  Introduc- 
tion.) 
against  libel  and  slander  essential  to  proper  relief,  405. 
(See  Forms.) 

INSURANCE  AGENT 

not  confidential  employee,  432,  434. 

INTENT 

unimportant  facts  not  a  basis  of  presumption  of;  62. 

INTENT  TO  DEFRAUD 

(See  List,  p.  42.) 
acts  showing,  must  be  imminent,  61. 
American  decisions  on,  49. 
cases  holding  it  must  be  proved,  51. 
cases  holding  proof  of  intent  is  immaterial,  45. 
definition,  51. 

on  defendant's  part  not  important  in  technical  trade-mark  cases,  20. 
denial  of,  unavailing  to  defendant  as  a  defense,  59,  468. 
intention  to  imitate  and  intention  to  defraud  different,  42. 
disclaimer  of,  has  no  effect,  311,  468. 
English  rule,  summary  of,  49. 
evidenced  by  small  details,  66. 
when  presumed,  52,  54,  55. 
how  pleaded,  54,  note  32a. 
lack  of,  as  a  defense,  468. 

presumption  of,  from  innocent  adoption  of  name  already  in  use,  56. 
proof  of,  in  use  of  family  names,  221. 

is  proof  of  it,  material  to  action  for  unfair  competition?  45. 
question  of,  is  a  defense,  42. 

(See  Malice.) 

INTEREST 

when  added  to  amount  of  damages,  462. 


Index.  541 

INTERFERENCE 

with  business  generally,  347,  358,  385. 

with  a  neighbor  by  acts  done  on  one's  own  land,  349  et  seq. 

with  servants,  statutes  against,  363,  364. 

with  trade,  unlawful,  20. 

INTERFERENCE  WITH  CONTRACTS 

with  passenger's  contract  with  transportation  company,  367. 

with  a  competitor's  contracts  and  business  generally,  347. 

with  conditional  contracts  between  manufacturers  and  retailers,  377. 

with  a  contract  causing  one  to  refuse  to  complete  it,  3C5. 

contract  must  be  valid,  373. 

elements  of  prima  facie  case  of,  369. 

by  false  representations  to  customers,  586. 

for  furnishing  information,  366. 

grounds  for  enforcing,  361. 

ignorance  of  existence  of  contract  no  defense  against  injunction, 

373. 
by  issuance  of  circulars,  387. 
of  lease,  procuring  breach  of,  373. 
what  is  legitimate,  384. 
of  retailers  as  to  prices,  378. 
by  multiplicity  of  suits,  386. 

must  such  acts  be  accompanied  by  threats,  violence,  etc.,  365. 
New  York  Eule  as  to,  375. 

notice  to  defendant  of  existence  of  contract,  369,  373. 
with  opera  singer's  contract,  enjoined,  364,  365. 
personal  in  character,  383. 
not  to  re-enter  business,  373-375. 
for  sale  of  goods  made  by  secret  process,  379. 
by  third  person,  enjoined,  360. 
by  threats  of  suit,  etc.,  387. 
United  States  Supreme  Court  position  as  to,  362. 
what  constitutes,  369. 

INVENTOR 

name  of,  right  of  buyer  of  invention  to  use,  302. 
originator  of  article,  sale  of  name  by,  114. 

rights  of,  to  inventions  discovered  when  employed  by  another,  433, 
434. 

(See  Employee.) 


542  Index. 

jobber 

deceit   of   ultimate   purchaser,    not   of   jobber   or   retailer,   import- 
ant. 81,  471  et  seq. 
defense  that  jobber  not  defendant  did  the  unfair  acts,  470. 
name  of,  from  whom  goods  bought,  a  secret  of  trade,  437. 
sales  to,  64. 

JURISDICTION 

of  courts  in  unfair  competition  cases,  441. 

of  United  States  courts  over  unfair  acts  done  abroad,  442. 

JUSTIFICATION 

discussion  of  what  constitutes,  356  et  seq. 

KAY, 

Lord,  summary  of  law  of  names,  176. 

KNOWLEDGE 

of  prior  use,  must  it  be  shown,  316. 

of  plaintiff's  rights  on  part  of  defendant  unnecessary,  55. 

LABELS 

(See  List,  p.  305.) 

action  on  misuse  of  features  of,  257,  331. 

containing  no  salient  feature,  but  in  which  whole  get-up,  including 
name,  is  unfair,  336. 

copying,  reading  matter  on,  318. 

false,  on  bottles,  324. 

having  general  resemblance  and  likeness  in  names,  but  where  in- 
junction was  refused,  340. 

in  which  names  are  not  similar  and  general  get-up  held  not  unfair, 
345. 

involving  no  similarity  in  name,  but  in  general  appearance  amount- 
ing to  unfair  competition,  342. 

misleading  use  of  one  proper  in  itself,  319. 

printers  of,  may  be  made  defendants  jointly  with  person  using  labels 
unfairly,  443. 

purchaser  is  not  bound  to  compare  carefully,  336. 

which  are  not  registered  or  copyrighted,  331. 

regulation  or  stock  labels,  right  to  sell,  11. 

in  which  the  salient  feature  is  a  device  or  catch  word  which  is 
copied,  334. 

simulation  of  those  in  which  a  name  is  the  principal  feature,  333. 


Index.  543 

LABELS  —  Continued. 

taking  labels  off  boxes,  etc.,  and  putting  on  others,  324. 
which  are  not  trade-marks  are  protected,  306. 
concealment  of  a  part  of,  is  unfair,  319. 
sale  of  assignor's  labels  in  bulk  by  assignee  unfair,  107. 

LABOR  CASES 

and  doctrine  of  interference  with  contract,  359. 

LABOR  UNION 

interference  with  contract  by,  376. 

LACHES 

(See  Acquiescence.) 
acquiescence  which  makes  it  inequitable  to  claim  rights,  506. 
differs  from  acquiescence,  513. 
effect  on  name,  177. 
kinds  of,  505. 

may  bar  right  to  preliminary  injunction,  511. 
may  bar  right  to  accounting,  457,  509,  510. 
in  the  sense  of  mere  delay  in  taking  action,  506. 
may  bar  right  to  demand  destruction  of  offending  goods,  511. 
one  first  using,  may  revoke  license  implied  from  use  without  right, 

508. 
silence  with  knowledge  presumes  a  consent  lasting  only  so  long  as 

the  silence,  507. 
material  delay  may  bar  right  to  accounting  for  profits,  510. 
may  be  evidence  of  fraudulent  intent,  409. 

"LATE  OF  FIRM  OF" 

use  of  term,  181. 

"  LATE  WITH  " 

use  of  term,  181. 

" LATELY  WITH  " 
use  of  term,  340. 

LEASE 

procuring  a  breach  of  provisions  of,  373. 

LESSEE 

of  hotel,  right  to  increased  value  of  name  due  to  his  efforts,  179. 

rights  of,  to  hotel  name,  177,  178. 

of  theatre,  right  of,  to  use  name  of  theatre,  103. 


544  Index. 

LETTERS 

addressed  to  defendant  instead  of  plaintiff,  167. 
libelous,  power  of  chancery  to  enjoin,  392. 
right  to  use  those  written  by  others,  38. 
may  be  secret  property,  440. 

LETTERS  OF  ALPHABET 

use  on  repair  parts.  282,  295,  299,  301. 
to  mark  goods  for  quality  or  grade,  278. 
as  names  of  merchandise,  278. 
use  of  on  parts  of  goods,  295. 

LIBEL 

trade,  not  libelous  per  se,  411. 

LIBEL  AND  SLANDER 

of  business  names  and  reputation,  388. 

difference  between  trade  libel  and  personal  libel,  395  et  seq. 

early  cases  of  injunctions  against,  391. 

by  ex-employee,  injunction  "against,  415. 

equity  will  enjoin  to  protect  property  against,  391  et  seq. 

of  goods,  388. 

importance  of  question  in  United  States,  395. 

instance  of    preliminary  injunction  to    prevent    injury  to  business 

from,  415,  417. 
when  preliminary  injunction  against  should  issue,  414,  450. 
of  reputation,  345. 
summary,  416. 
summary  of  English  cases,  as  to  original  powers  of  courts  of  equity 

to  enjoin,  393. 
theory  that  delay  of  suit  at  law  a  basis  for  issuing  injunction  against, 

407. 
suits  at  law  against,  delay  in,  398. 
English  Procedure  Acts  relating  to,  389. 

jurisdiction  of  equity  over,  prior  to  Procedure  Acts  of  1873,  391. 
American  cases,  398. 
right  to  issue  threatening  circulars,  403. 
theory  that  threats  must  be  proven  to  warrant  issuing  injunction, 

406. 
not  libelous  per  se,  411. 
statutes  as  to  libels,  effect  of,  416. 


Index.  545 

LICENSE 

revocable  (not  consent)  is  to  be  presumed  from  silence  of  owner  of 
mark  or  name  used  by  others  without  right,  507. 

first  user  of  name  or  mark  may  revoke  license  implied  from 
laches,  508. 

LITHOGRAPHERS 

of  labels,  etc.,  liability  of,  473. 

LOCATION 

(See  Place.) 
of  competitors,  effect  on  question  of  similarity,  80. 
of  competing  store  set  up  by  ex-stockholder,  211,  note  23. 
of  signs,  truthful  in  themselves,  may  be  fraudulent,  184. 
of  stand  or  store  of  defendant  evidence  of  fraud,  214. 
of  plants  of  plaintiff  and  defendant,  239. 
choice  of  new  stand  by  vendor  of  a  business,  118,  453. 
distance  between  competitors'  places  of  business,  effect  on  names, 

141,  161,  224. 
effect  of,  on  name,  173. 
effect  of  removal  of  plant  or  business  on  use  of  geographic  names, 

244. 
effect  of  two  persons  using  same  surname  as  business  name  in  same 

city,  142,  143. 
fact  that  defendant  has  not  extended  his  business  to  plaintiff's  terri- 
tory, 172. 
name  of,  must  be  closely  associated  with  goods  bearing  that  name, 

231. 
of  new  stand  set  up  by  one  who  has  sold  out,  115. 
of  plants  of  rivals,  effect  on  name,  239. 
putting  stores  next  each  other  may  be  fraudulent,  493. 
locality  in  which  reputation  of  goods  must  exist  to  create  secondary 

meaning,  168. 
locality  in  which  a  secondary  name  becomes  known,  172. 

LUMLEY 

v.  Gye,  364. 

MAGAZINES 

names  of,  188,  193,  194. 

locality  in  which  they  circulate,  effect  of,  193. 


546  Index. 

mail 

address,  unfair  use  of,  252. 
order  business,  39. 
received  by  wrong  person,  167. 
(See  Letters.) 

MAKER  OF  GOODS 

misrepresentation  as  to,  490. 

defense  that  defendant  was  merely,  for  another,  473. 

MALICE 

definitions  of,  355,  356. 
does  it  create  a  cause  of  action?  354. 
does  it  make  an  unactionable  act  actionable?   355. 
injury  to  another,  done  with,  354. 

in  the  sense  of  ill-will,  not  a  necessary  ingredient  of  action  for  in- 
terference with  contract.  368. 

MANAGER 

of  a  business  is  employee,  so  far  as  betrayal  of  secrets  is  concerned, 

430., 
rights  of  former  manager,  182. 

MANUFACTURE 

misrepresentation  as  to,  487. 

MANUFACTURER 

secondary  meaning  of  name  of,  232. 

conditional  contracts  of,  with  retailers,  including  breach  of,  377. 
of  offending'  article  may  be  joined  with  other  sellers  of  article  as- 
defendants,  444. 

(See  Merchandise.) 

MARKET 

foreign,  effect  of  on  use  of  names,  243. 

of  goods,  extent  and  locality  of,  important  as  to  names,  235. 

MARKS 

(See  Trade-Marks.) 
designs,  etc.,  character  or  nature  of  property  rights  which  may  be 
acquired  in,  23. 
differ  from  names,  164. 
no  distinction  between  rights  in  names  or  marks,  acquired  by  user, 

24. 
right  to  use  mark  in  trade  is  limited  to  one  kind  of  business,  23. 
transfer  of.     (See  Transfer.) 


Index.  547 

MATERIAL,  RAW 

use  of  same  by  competitors,  240. 

MASTER  AND  SERVANT 

(See  Employee  and  Agents.) 

MATERIALMEN 

enjoined  for  breach  of  contract  with  builders,  362. 

MAXIMS 

"  ex  turpi  causa  non  oritur  actio,"  477. 
"Rem  facias,  rem  si  possis.  reete,"  etc.,  36,  note  92. 
"  nullum  tempus  occurrit  regi,"  514. 

"  he  who  comes  into  equity  must  do  so  with  clean  hands/'  476,  479, 
481,  499. 

MEDICAL 

preparation,  ingredients  of,  misrepresentations  as  to,  481. 

MEDICINE 

extravagant  claims  for,  487,  501. 

MERCHANDISE,  NAMES  OF 

acquired  or  secondary  meaning  of,  261. 
descriptive  of  construction  necessary  to  article,  261. 
unfamiliar  and  scientific  names  as,  263. 
artificial  words  or  names  as,  264. 
scientific  words  as,  263. 

copying  exactly  a  name  used  by  another,  265. 
appearing  to  the  eye  as  similar,  267. 
which  have  the  same  sound,  idem  sonans,  269. 
foreign  words  as,  274. 
abbreviations  of,  275. 

may  be  known  by  name  of  goods  only,  maker  being  unknown,  90. 
numerals  and  letters  as,  278. 
to  designate  grade,  278. 

source  or  origin,  280. 

series,  282. 
initials  as,  281. 
duty  to  differentiate  goods  from  those  already  on  the  market,  291. 

MISREPRESENTATION 

in  advertising  matter,  495. 

claiming  falsely  to  be  corporation,  502. 


54:8  Index. 

MISREPRESENTATION  —  Continued. 

defense  that  plaintiff  is  causing,  in  his  business,  476. 

discontinued  before  suit  brought,  479. 

inaccuracies  and  exaggerations  do  not  always  constitute,  480. 

as  to  maker  of  goods,  495. 

as  to  manufacture,  487. 

as  to  ingredients,  481,  486. 

must  be  as  to  subject  matter  of  suit,  478. 

must  be  intentional  and  material,  480. 

as  to  origin  of  goods,  487. 

as  to  place  of  manufacture,  487. 

by  laudatory  or  exaggerated  phrases,  498. 

as  to  unessential  details,  492. 

usually  affirmative  defense,  478. 

single  misstatements  not  a,  4S0. 

implying  claim  of  monopoly,  494. 

instances  of  harmless,  502. 

MISSTATEMENTS 

single,  not  misrepresentations,  480. 

MONOGRAMS 

(See  Letters  —  Devices.) 

MONOPOLY 

trade  secret  is  not,  424. 
false  claim  of,  494. 

MOTIVE 

of  defendant,  47,  48. 

devising  similar  names  or  marks  without  reason,  evidence  of  fraudu- 
lent, 64. 

(See  Intent  to  Defraud.) 

MULTIPLICITY 

of  suits,  interference  with  contract  by  bringing,  386. 

MUSICIANS 

names  of,  used  in  business  not  transferable,  95. 

NAMES 

abstract,  of  objects,  165. 

differ  from  business  names,  165. 
action  on,  exclusive  right  to  name  not  necessary  to  action  for  unfair 
competition  on,  23. 


Index.  549 

NAMES  — Continued, 
ambiguity  in,  82. 

of  articles  of  merchandise,  260.    (See  List,  p.  260;  Merchandise.) 
artificial  or  made-up,  264. 
of  buildings,  177. 
of  cities,  242. 

changing  personal  names  voluntarily,  150-152. 
changing  one's  name  voluntarily,  152. 
concealment  of  part  of,  effect  of,  319. 
copying  identical  name  of  competitor,  265. 
corporate,  197.     (See  Corporate  Names.) 

may  be  enjoined  though  adopted  in  good  faith,  60. 
decree  correcting  confusing  use  of,  453. 

decree  directing  use  of  full  name  in  place  of  mere  surname,  131. 
derived  from  names  of  places,  right  to  use,  101,  226. 
descendants  may  use  father's  name  fairly,  157. 
descriptive  of  construction  necessary  to  an  article,  261. 
differ  from  marks,  designs,  etc.,  164. 
no  distinction  between  rights    in    names    and    marks    acquired  by 

user,  24. 
with  double  meaning,  276. 
duty  on  incorporators,  to  differentiate  name  of  new  company  from 

existing  names,  206. 
of  employers,  right  of  ex-employee  to  use,  181. 
extent  of  reputation   of,   necessary   to  create  secondary  meaning, 

168,  note. 
false  or  misleading,  use  of,  221. 
family,  sale  of  right  to  use  for  known  fraud,  152.     (See  Family 

Fames.  ) 
father  and  son,  use  of  same  name  by,  in  same  business,  159. 
foreign,  175. 
foreign  words  as,  274. 

geographic.     (See  Geographic  or  Place  Names.) 
of  hotels,  177.     (See  Hotel.) 
of  hotel,  fights  of  lessee  in,  177. 

right  of  owner  of  premises  in,   179. 
idem  sonans,  267-269. 

of  localities  go  with  places  on  sale  of  them,  100.     (See  Location.) 
making  them  unduly  prominent,  may  be  unfair,  98. 
may  be  sold  so  as  to  preclude  owner  from  again  using  them,  97. 
names  or  marks  may  not  be  sold  distinct  from  article  to  which  they 

are  attached,  101. 


550  Index. 

NAMES  —  Continued. 

of  natural  products,  245. 
passing  off  of,  what  constitutes,  125. 

personal  or  family,  nature  of  right  in  one's  own  name,  125.     (See 
Family  Name.) 

right  to  use,  17. 
of  places  as  trade-names  on  goods,  ma}'  be  sold,  101.     (See  Geo- 
graphic or  Place  Names.) 
plea  of  necessity  of  use  of  particular  name,  209. 
of  predecessors,  continuing  use  of,  491. 
presumption  that  no  one  intends  to  part  with  right  to  use  his  own 

name,  97. 
priority  in  use  of,  181. 
priority  in  use  of  family  names,  146. 
property  in,  character  of,  23. 
publici  juris,  208. 

test  of,  when  word  becomes,  515. 
purchase  of,  for  fraudulent  purpose,  93. 
qualified  and  partial  rights  in  may  be  transferred,  23. 
regulation  of  use  of  by  equity,  221. 
recent  demand  for  protection  of,  125. 

removal  of  business  house,  effect  of  on  name,  173.     (See  Site.) 
one's  right  to  use,  is  property  protected  by  equity,  38. 
right  to  use  in  trade  limited  to  one  kind  of  business,  23. 
right  to  use  one's  own  name  in  business,  126  et  seq.,  138  et  seq., 

208-219. 
sale  of,  preventing  further  use  of,  97. 

for  use  in  naming  a  new  business,  145. 
sale  of  one's  name  to  one  who  has  no  right  to  use  it,  150-152. 
secondary  meaning  of,  37.     (See  Secondary  Meaning.) 

substitution  of  nicknames  for,  creates  secondary  meaning,  167. 

essentials  of,  168,  169. 

need  be  acquired  in  limited  territory  only,  172. 

plaintiff  must  prove  existence  of,  166. 

a  question  of  priority  not  wideness  of  reputs  of  name,  146. 
semi-geographic,  "  Hoosier,"  "  Empire  State,"  etc.,  170,  171. 
similarity  of.  83.     (See  Similarity.) 

as  appealing  to  the  eye,  267. 

basis  of  presentation  of  fraud,  63. 

ground  of  action  as  to,  58. 
statutes  as  to  choice  of,  206. 
substitution  of  nicknames  for,  creates  secondary  meaning,  167. 


Index.  551 

NAMES  — Continued. 

summary  of,  law  of,  by  Lord  Kay,  176. 

trade-names  differ  from  abstract  or  general  names,  165. 
not  assignable  in  gross,  102. 

considered  as  transitory  or  personal,  local  or  fixed,  177. 

which  are  not  transferable,  95. 

transfer  of.  by  will,  165. 

for  fraudulent  purpose,  152,  note  52. 

use  of,  without  consent  of  owner,  222. 

use  of,  must  be  reasonable  and  honest,  209. 

use  of  one's  name  on  goods  unfairly  copied,  79,  292. 

"^Etna  Iron  Works,"  217. 

"Air  Cushion  Pads,"  262,  note  5. 

"Akron  Cement,"  257. 

"Akron  Dental  Rubber,"  and  "  Non-Secret  and  Vulcanite  made  ac- 
cording to  an  analysis  of  Akron  Dental  Rubber,"  309. 

"Allegretti,"  220,  note  39. 

"Allegretti  Chocolate  Cream  "  and  "Allegretti,"  147,  note. 

"Alpen  Krauter  "  and  "  St.  Bernard  Alpen  Krauter,"  88,  note. 

"American  Ball  Blue  "  and  "American  Wash  Blue,"  106. 

"American  Clay  Mfg.  Co."  and  "American  Clay  Mfg.  Co.  of  New 
Jersey,"  200,  note. 

"American  Grocer  "  and  "  The  Grocer,"  189. 

"American   Shoe  Company "  and  "  London- American  Shoe   Com- 
pany," 80. 

"American  Waltham  Co.."  227. 

"American  Watchman's  Clock  Company,"  216. 

"American  Wine  Company,"  206,  note  16. 

"  Anatolia,"  236,  note  18. 

"Anchor  Rosendale  Cement,"  228. 

"Angostura  Bitters,"  245,  note  27. 

"A.  N.  Hoxie's  Mineral  Soap,"  111. 

"Antiquarian  Book   Store"  and  "Antiquarian   Book  and  Variety 
Store,"  85,  note. 

"Apollinaris  "  and  "  London  Apollinaris,"  273,  note  47. 

"Argyrol,"  327. 

"Army  and  Navy  Co-operative  Society  "  and  "Army  and  Navy  and 
Civil  Service  Co-operative  Society  of  South  Africa,"  85,  note. 

"  Atwood's  Vegetable  Jaundice  Bitters,"  488. 

"  Bakers  Chocolate,"  68.  132  et  seq. 

"  Balm  of  a   Thousand  Flowers "  and  "  Balm  of  Ten  Thousand 
Flowers,"  483. 


552  Index. 

NAMES— Continued. 

"  Bell's  Life  in  London  and  Sporting  Chronicle  "  and  "  Penny  Bell's 
Life  and  Sporting  News,"  190,  note. 

"  Bethesda  Mineral  Spring  "  and  "  Glen  Bethesda  Mineral  Water," 
245. 

"  Benedictine,"  491. 

"  Best  &  Co.,  Liliputian  Bazaar,"  and  "  Broadway  Bazaar,  Brook- 
lyn's Best  Liliputian  Store,"  39,  140,  233,  note  11. 

"  Be  Sure  to  Work  the  Horse  "  and  "Always  Work  the  Horse,"  67. 

"Bingham  School,"  160. 

"Birthday  Scripture  Text  Book"  and  "The  Children's  Birthday- 
Text  Book."  195,  note. 

"  Black  Swan  Distillery,"  103,  174. 

"  Blake  Belt  Stud,"  303. 

"  Blue  Label,"  323. 

"Blue  Lick  Water,"  239,  note  238. 

"  Boston  Peanut  Boasting  Co."  and  "  Boston  Trade  and  Peanut 
Boasting  Company,"  214,  note  28. 

"  Brooklyn  White  Lead  Company  "  and  "  Brooklyn  White  Lead  and 
Zinc  Company,"  87,  note." 

"Brown's  Iron  Bitters,"  and  "Brown's  Iron  Tonic  Bitters,"  88, 
note  149. 

"  Bromo-Quinine  "  and  "  Bromide  Quinine,"  485. 

"  Brown's  Windsor  Soap,"  510. 

"  Budweiser,"  248. 

"  Bull  Dog  Bottling,"  258,  note  46. 

"Bulls  Head  Mustard,"  315,  316. 

"Burgess  Atomizer,"  293. 

"Burgess's  Essence  of  Anchovies,"  127. 

"  Caledonia  Water "  and  "  Natural  Saline  Water  from  the  New 
Springs  at  Caledonia,"  246,  note  29. 

"  California  Pears,"  230. 

"Camel  Hair  Belting,"  166. 

"  Cameron's,"  148,  note  45. 

"  Carlsbad,"  235,  note  17. 

"Carlsbad  Sprudel  Salz"  and  "Improved  Carlsbad,"  238. 

"  Cascarets  "  and  "  Cascara,"  336,  337. 

"  Cash's  Frillings,"  "  Cash  v.  Cash,"  142. 

"  Cashmere  "  and  "  Violets  of  Cashmere,"  274,  note. 

"  Castle  Brewery  "  and  "  Castle  Vaults,"  84,  note. 

"  Castoria,"  301. 

"  C.  B."  and  "  C.  B.  &  Co.,"  281. 

"Central  (Trade)  Union,"  313. 


Index.  553 

NAMES— Continued. 

"  Chadron  Opera  House,"  181. 

"  Charles  S.  Higgins  Co."  and  "  Higgins  Soap  Co.,"  130,  220. 

"  Charter  Oak  "  "  Stoves,"  266. 

"  Chartreuse,"  and  "  Chasseurs."  272. 

"  Chatterbox  "  and  "  Prank  Leslie's  Chatterbox,"  196,  note. 

"  Chicago  Landlords'  Protective  Association  "  and  "  Chicago  Land- 
lords' Protective  Bureau,"  57. 

"  Chicago  Waists,"  256. 

"  Chickering,"  159,  note  63. 

"  Christian's  Superlative "  and  "  Pettit,  Christian  &  Company 
Superlative."  50. 

"Chocolate  Chips"  and  "Trowbridge's  Chocolate  Chips,"  115,  note 
36. 

"  Civil  Service  Book  Supply  "  and  "  Civil  Service  Supply  Associa- 
tion," 83,  note. 

"  Clark's,"  154,  note  55. 

"  Clysmic  Spring  "  and  "  Clysmic  Water,"  216,  247. 

"  Cocoaine  "  and  "  Cocoine,"  273. 

"Comfort"  and  "  Home  Comfort/'  193,  note;  274,  note. 

"  Continental,"  259. 

"Congress"  and  "High  Pock  Congress,"  273,  note  47. 

"  Coudy's  Fluid/'  323. 

"  Creamalt  "  and  "  Crown  Malt,"  291. 

"  Crookston  Marble  and  Granite  Works  "  and  "  Crookston  Marble 
Works,"  174,  216.  note  32. 

"  Crowley's  Steel  "  and  "  Crowley,  Millington,"  etc.,  45. 

"  Crown,"  100,  note  10. 

"Cuticle"  and  "  Cuticura,"  273. 

"Cutter's  Whiskey"  and  "J.  H.  Cutter  — Old  Bourbon,"  "J.  F. 
Cutter,  Son  of  the  late  J.  H.  Cutter,"  etc.,  158. 

"  Cyclops  Iron  Works,"  24. 

"  Deer  River  Ploughs,"  244. 

"  De  Long  Hook  and  Eye,"  207,  note  17. 

"  Democratic-Republican  New  Era  "  and  "  New  Era,"  190,  note. 

"De  Youngs"  and  "The  Youngs,"  186. 

"  Dodge's  "  and  "  J.  S.  Dodge  &  Company,"  211.  note  23. 

"  Dr.  Bull's  Cough  Syrup  "  and  "  Dr.  B.  L.  Bull's  Celebrated  Cough 
Syrup,"  78,  note  18. 

"Dr.  Drake's  German  Croup  Remedy"  and  "Dr.  Drake's  Famous 
German  Croup  Remedy,"  150,  note  50. 

"Dr.  J.  Hostetter's  Stomach  Bitters"  and  "  Hostetter's  Bitters," 
145,  note. 


554:  Index. 

NAMES  —  Continued. 

"  Dr.  Johnson's  Yellow  Ointment,"  14. 

"  Dr.  Morse's  Compound  Syrup  of  Yellow  Dock  Root "  and  "  Dr. 
Morse's  Improved  Yellow  Dock  and  Sarsaparilla  Compound," 
269. 

"  Dr.  Stewart's  Dyspepsia  Tablets  "  and  "  Stewart's  Dyspepsia  Tab- 
lets," 271,  note  27. 

"  Duryea's  Starch,"  155,  note  56. 

"Elastic  Seam"  and  "  Stretchi-seam,"  266,  300. 

"  El  Cabio  "  and  "  El  Cavio,"  342. 

"  Elgin,"  465,  note. 

"  Elgin  National  Watch  Company  "  and  "  Elgin  Watch  Case  Com- 
pany," 446. 

"Empire  State,"  170. 

"  Encyclopaedia  Britannica,"  195. 

"Eureka,"  286. 

"  Extract  of  Night  Blooming  Cereus,"  485. 

"Evening  Post"  and  "Morning  Post,"  191,  note. 

"  Every  Day  Soap  "  and  "  Every  Body's  Soap,"  341. 

"Faber"  and  "  Faber  Pencil  Co.,"  etc.,  451. 

"  Famous,"  150. 

"  Famous  Portland  "  Stove,  254. 

"  Fels  Naphtha  Soap  "  and  "  Naphtha  Soap,"  169. 

"  Fig  Syrup  "  and  "  Syrup  of  Figs,"   481. 

"  Fine  Old  Whiskey,"  485. 

"  Flaked  Oatmeal,"  263,  note  5. 

"  Flare  Front,"  292. 

"Flavel's  Patent  Kitchener,"  494. 

"  Flor  de  Dindigul "  and  "  Cigarro  fie  Dindigul,"  240,  note  21. 

"Formerly  with  Best  Co.,  New  York,"  141. 

"Forsythe  Waists"  and   "Foresight    Waists,"  270. 

"  Frank  Leslie's,"  152,  note. 

"  Fruit  Salt "  and  "  Dunn's  Fruit  Salt  and  Potash  Tablets,"  265, 
note  8. 

"  Genuine,"  150. 

"  Georgia  Coon  "  and  "  Coon  Molasses,"  87. 

"German  Household  Dyes"  and  "Excellent  German  Household 
Dyes,"  274,  339,  note. 

"  German  Sweet  Chocolate  "  and  "  Sweet  German  Chocolate,"  268. 

"  Germea  "  and  "  Golden  Eagle  Germ,"  337. 

"  Gessler's  Magic  Headache  Wafers"  and  "Brown's  Alphea  Head- 
ache Wafers,"  342. 


Index.  555 

NAMES— Continued. 

"  Glendon,"  231,  note  9. 

"  Glenboig,"  240. 

"  Gold  Drop  "  and  "  Gold  Dust,"  270. 

"  Golden  Crown  "  and  "  Golden  Chain,"  337,  338,  note. 

"  Goodyear  Rubber  "  and  "  Goodyear  Rubber  Company,"  144,  note. 

"Grape  Nuts"  and  "Grain  Hearts  Food,"  34,  272. 

"  Gruber  Almanak  "  and  "  J.  Gruber's  Hagerstown  Almanac,"  492. 

"  Guaranteed  to  contain  Landreth's  Extra  Early  Peas.  Provided 
the  Seal  is  Unbroken  "  and  "  This  bag  contains  Landreth's  Extra 
Early  Peas  provided  the  seal  is  not  broken,"  154. 

"  Green  Mountain,"  241. 

"  Guinea  Coal  Co."  and  "  Pall  Mall  Guinea  Coal  Co.,"  182,  note  84. 

"  Habana,"  489. 

"Holloway's  Pills  and  Ointment,"  127. 

"Hall's  Safes,"  156. 

"Hall's  Vegetable  Sicilian  Hair  Renewer "  and  "  R.  P.  Hall's 
Improved  Preparation  for  the  Hair,"  99,  note. 

"  Hamburg  Tea,"  312. 

"Havana  Cigars,"  229. 

"  Hazelton  Boiler  Company  "  and  "  Hazelton  Tripod  Boiler  Com- 
pany," 201,  note  5. 

"  Health  Food  "  and  "  Sanatarium  Health  Food,"  273,  note  47. 

"  Henry's  Royal  Modern  Tutor,  etc."  and  "  Henry's  New  and 
Revised  Edition,  etc.,"  194,  note. 

"  Hero  "  and  "  Heroine,"  273. 

"  97  High  Holborne  "  and  "  90i/o  Holborn  Hill,"  188. 

"  Hire's  Root  Beer,"  147,  note. 

"  Hoff  s  Malt  Extract "  and  "  Johann  Hoff's  Malt  Extract,"  131. 

"Hoosier,"  171. 

"  Hootan  "  and  "  Van  Houten,"  452. 

"  Home  "  and  "  Home  Delight,"  273,  note  47. 

"  Hostetter  "  and  "  Host-Style,"  325. 

"  Hoyt's  German  Cologne  "  and  Hoyt's  Egyptian  Cologne,"  314. 

"  Hygeia,"  172,  note. 

"  Improved  Order  of  Knights  of  Pythias "  and  "  Knights  of 
Pythias,"  204. 

"Independent  National  System,  etc."  and  "Payson,  Dutton  & 
Scribner's  National  System,"  etc.,  272. 

"  In-er  Seal "  and  "  Factory  Seal,"  335. 

"Tnsect-ine"  and  "  Tnstantine,"  269. 

"  Insurance  Oil,"  86. 


556  Index. 

NAMES— Continued. 

"  International/'  259. 

"International   Trust  Co."   and  "International  Loan  and  Trust 

Company,"  205. 
"Iron-Ox  Tablets"  and  "Iron  Oxide  Tablets,"  271. 
"  Irving  House  "  and  "  Irving  Hotel,"  179. 
"  Ivy  Soap "  and  "  Ivory  Soap,"  81,  note. 
"John  Bull  Beer,"  266". 

"  John  Knight's  Primrose  Soap  "  and  "  Primrose  Soap,"  475. 
"Johnson's  Anodyne  Liniment,"   "A.   Johnson"   and  "Johnson's 

Anodyne  Liniment,"  "  F.  E.  Johnson,"  340. 
"John  Turton  &  Son?,"  128. 

"Junket  Tablets"  and  "Junket  Capsules,"  169,  note  5. 
"  Keystone  "  and  "  Keystone  Maid,"  171. 
"  Keystone  Lubricating  Company  "  and  "  Keystone  Oil  Company," 

171. 
"  Kodak,"  265,  note  8. 

"  Kodak  Cameras  "  and  "  Kodak  Bicycles,"  23,  note  50a. 
"Ivy's  Criterion,"   268. 
"Lamb  Knit"  and  "  Lamb  "Stitch,"  219. 
"  Leader,"  286. 
"  Legal  Aid  Society  "  and  "  Wage  Earner's  Legal  Aid  Asso.,"  203, 

note  9. 
"Le  Page's  Glue,"  324. 
"Lexington  Mustard,"  256. 
"Licbig's  Extract  of   Meat   Co.,   Ltd."   and  "Extract   of  Meat," 

"  Liebig's  Fluid  Beef  Co.,"  145,  note. 
"  Liliputian  Bazaar,"  39,  140,  233,  note  11. 
"Limette"  and  "Linnetta,"  272. 
"  Liquor   Acidi   Phosphorici,"   and   "  Hosford's  Acid   Phosphate," 

272. 
"  London  Conveyance  Co."  and  "  Conveyance  Co.,"  16. 
"  Magnolia  Anti-friction  Metal,"  267,  note  10. 
"  Manufacturers'   Outlet   Company "   and   "  Taunton   Outlet   Com- 
pany," 86,  note. 
"  Marzena  "  and  "  Marzharina,"  272. 
"  McFell  Electric  Company  "  and  "  McFell  Electric  and  Telephone 

Company,"  109,  110,  184. 
"  Mechanic's  Store  "  and  "  Mechanical  Store,"  85,  note. 
"  Mechanics'  Store,"  329. 

"Merchant  Banking  Co."  and  "  Merchant's  Joint  Stock  Bank,"  224. 
"  Metuchen  Inn,"  180. 


Index.  557 

NAMES  —  Continued. 

"  Minneapolis  Flour,"  237,  note  19. 

"  Model  Hats  "  and  "  The  Medal  One  Dollar  Hats,"  493. 

"  Moniteur  "  and  "  Moniteur  Officiel,"  192. 

«  Monopol  Tobacco  Works  "  and  -  North  Pole  Tobacco  Works,"  308. 

'<  Montserrat  Lime  Fruit  Juice,"  323. 

-  Morning  Post  "  and  «  Evening  Post,"  191,  note. 

"Mortons;"     "Morton's    Transfer    Company"     and       Mortons 

Special  Delivery,"  149,  note  45. 
«  Moxie  Nerve  Food  "  and  "  Standard  Nerve  Food,"  340. 
"Mumm's  Extra  Dry"  and  "Extra  Dry,"  310. 
"National  Folding  Box  and  Paper  Co."  and  "National  Folding 

Box  Co.,"  225. 
"National  System  of  Penmanship"  and  "Independent  National 

System  of  Penmanship,"  194,  note. 
"New  Series  Improved,"  18.  _ 

"New    York    Commercial"    and   "Commercial    Advertiser,      190, 

note. 
"  New  York  Dental  Rooms  "  (in  St.  Louis),  253,  note  39. 
"New  York  Specialty  Works,"  216. 
"  Nickle  Store,"  169. 

"97  High  Holborne"  and  "901/2  Holborn  Hill,"  188. 
"  Norwood  "  and  "  Norwood  Hall,"  180. 
"No-To-Bac"  and  "  Baco-Curo,"  269. 
"  No.  10  South  Water  Street,"  24,  186,  187,  note  34. 
"Old  Coon  Smoking  Tobacco"  and  "Old  Bachelor  Smoking  To- 
bacco," 344.  „ 
"  Old  Homestead  Bread  "  and  "  New  Homestead  Bread,     2 )Z. 
"  Old  Taylor"  and  "  Fine  Old  Kentucky  Taylor,"  149,  note  45. 
"  Old  Velvet,"  182. 
"  Omega  Oil,"  24,  note  51. 
"  Orient  "  and  "  Oriental,"  259. 
"  Oriental  Progress  Eug  Renovating  Company"  and     Oriental  Rug 

and  Carpet  Renovating  Works,"  86,  note. 
"  Original,"  150.  .  „ 

"  Original  La  Tosca  Social  Club"  and  «  La  Tosca  Social  Club,    223. 

"  Osborne  House,"  107. 

"  Ottoman  Cahvey  Co.,"  202,  note  7. 

"  Oval  Blue  "  and  "  Bobby  Blue,"  169. 

"  Oxford  Bibles,"  251. 

"Parcheesi,"  271. 

"Pastor  Ivneipp  Medicine  Co."  and  "Kneipp,"  222,  note  42. 


558  Index. 

NAMES  —  Continued. 

"  Peck  Bros.  &  Co."  and  "  Peck  Bros.  Co.,"  222,  note  41. 

"  Penberthy    Injector    Co."    and    "  Lee-Penberthy    Manufacturing 

Company,"  220. 
"  Pepto  Mangan "  and  "  Pepto  Manganate  of  Iron  and  Cascara," 

2G3. 
"Perry's   Medicated   Mexican   Balm"   and   "  Truefitt's   Medicated 

Mexican  Balm,"  484. 
"  Pessendede,"  175. 

"  Petit  Journal  "  and  "  Petit  Journal  de  la  Somme,"  193. 
"  Philadelphia  Cream  Cheese,"  255. 
"Pillsbury's  Best  XXXX,  Minneapolis,  Minn.,"  and  "L.  F.  Pills- 

bury's  XXXXXXX  Best  Patent,  Minnesota,"  147,  148,  note  44. 
"Pinet,"  153,  note  53. 

"  Police  Gazette  "  and  "  The  U.  S.  Police  Gazette,"  192. 
"Pride"  and  "Pride  of  Syracuse,"  274,  note. 
"  Prince's  Metalic  Paint,"  467. 

"  Packet  Store  "  and  "  Xew  York  Racket  Store,"  8G,  note. 
"  Eadstock  Coal  Works,"  etc,  234. 
"Pailroad  and  Engineering  Journal"  and  "Engineering  Xews  and 

American  Railway  Journal,"  191,  note. 
"Rainier  Beer"  and  "Rhinegold  Beer,"  339. 
"  Reading  Biscuits,"  242. 
"  Red  Cross  Plaster,"  316. 
"  Red  Cross,"  497. 

"Remington"  and  "Remington  Sholes,"  209,  210. 
"Revere  House,"  179,  note  23. 
"Rex"  and  "  Rexall,"  270. 

"  Rough  on  Rats  "  and  "  Rough  on  Mosquitoes,"  268. 
"  Rowley  Artificial  Limbs,"  140. 
"Royal"  and  "Royal  Baking  Powder,"  131,  note. 
"Royal"  and  "Royal  London,"  273,  note  47. 
"  Roy  Watch  Case  Company  "  and  "  Camm-Roy  Watch  Case  Co.," 

274,  note. 
"Rugby  Portland  Cement,"  231. 
"  Sanitas  "  and  "  Condi's  Sanitas,"  274. 
"  Sapolio  "  and  "  Sapho,"  339. 
"  Saponifier,"  321. 

"  Sarony,"  152,  note  52;  210,  note  22. 
"  Sawyer's  Crystal  Blue  and  Safety  Box "  and  "  Sawin's  Soluble 

Blue  and  Pepper  Box,"  333. 
"Schnapps,"  321. 


Index.  559 

NAMES— Continued. 

"  Scriven's  Elastic  Seam  "  and  "  Standard  Stretchy  Seam,"  266,  300. 

"  Seixo  de  Cima,"  etc.,  240. 

"  Shawknit,"  281. 

"  She  "  cigars,  266,  note. 

"  S.  Howes  Company  "  and  "  The  Howes  Grain  Cleaner  Company," 
122,  123,  215,  note  30. 

"Silver-pan,"  167. 

«  Six  Big  Tailors  "  and  "  Six  Little  Tailors,"  86,  note. 

"Social  Eegister"  and  "Howard's  Social  Register,"  195,  note. 

"  Social  Register,  Newport,"  and  "  Newport  Social  Index,"  195, 
note. 

"  Sons  and  Daughters  of  the  Evening  Star  Society  "  and  "  Brothers 
and  Sisters  of  the  Evening  Star  Society,"  200,  note. 

"Sorosis;"  "  Sartoria  "  and  "  Satoria,"  271. 

"  Standard  Computing  Scales  "  and  "  Standard  Scales,"  272. 

"Star"  and  "Lone  Star,"  274,  note. 

"Steinway"  and  "Steinberg,"  272. 

"  Stephens'  Blue  Black  "  and  Steelpens'  Blue  Black,"  269,  335. 

"  Sterling  Ale  "  and  "  Worcester  Sterling  Ale,"  88,  note. 

"  Sterling  Silk  Manufacturing  Company  "  and  "  Sterling  Silk  Com- 
pany," 87,  note. 

"  St.  Louis  Beer,"  243. 

"  Storm's  Liver  Regulator  "  and  "  Storm's,"  158,  note  62. 

"  Stuart's  Dyspepsia  Tablets  "  and  "  Dr.  Stewart's  Dyspepsia  Tab- 
lets," 77. 

"Sunlight"  and  "American  Sunlight,"  273,  note  47. 

"  Syrup  of  Figs  "  and  "  Fig  Syrup,"  481. 

"  Taussaud's  "  and  "Louis  Tussaud's  Limited,"  151. 

"  Taylor's  Persian  Thread,"  10. 

"The  Accident  Company"  and  "  The  Accident,"  216,  note  3D. 

"The  Best  Twist"  (tobacco)  and  "Rainbow  Twist,"  337. 

"  The  Dominion  Hotel  "  and  "  The  New  Dominion,"  180,  note  24. 

"The  Globe,"  184. 

"  The  Grocer,"  189. 

"  The  Mail  "  and  "  The  Morning  Mail,"  189,  note  37. 

"The  North  Cheshire  Brewing  Co.,  Ltd.,"  and  "The  North 
Cheshire  &  Manchester  Brewing  Co.,  Ltd.,"  213,  note  27. 

"  The  Pictorial  Almanack "  and  "  Old  Moore's  Family  Pictorial 
Almanack,"  447. 

"  The  Vulcan  ;  "  "  Damp  Proof  "  and  "  Vulture  Damp  Proof."  338. 

"The  Young  Women's  Christian  Association"  and  "The  Young 
Women's  "Christian  Association  of  Chicago,"  202,  note  8. 


560  Index. 

NAMES  — Continued. 

"The  Youngs"  and  "  de  Youngs,"  186. 

"Thorley's  Food  for  Cattle,"  212. 

"  Times  Bicycles  "  and  "  The  Times,"  23,  note  50a. 

"  Toothache  Gum,"  339. 

"Tower  Palace"  and  "Tower  Palace  Carpet  Store,"  232. 

"  Trommer,"  490. 

"Turpentine  Shellac,"  261. 

"Union  Leader"  and  "Union,"  313. 

"  Union  Made,"  313. 

"United  States  Dental  Association"  and  "  U.  S.  Dental  Rooms," 
185. 

"  United  States  Frame  and  Picture  Company "  and  "  New  York 
Frame  and  Picture  Company,"  87,  note. 

"  United  States  Investor  "  and  "  The  '  Investor,'  "  194,  note. 

"United  States  Watch  Co.,"  227. 

"  Universal  Life  Assurance  Society "  and  "  Universal  Life  Assur- 
ance Association,"  44U. 

"  University  of  Philadelphia "  and  "  University  of  Pennsylvania," 
87,  note. 

"Valentine  Meat  Globules "  and  "Valentine;"  "Valtine,"  155, 
note  55. 

"Van  Auken"  and  "Van  Auken  Specialty  Co.,"  219. 

"Van  Stans  Stratena  Co.  Cement;"  "Victor  F.  Van  Stans 
Cementive  "  and  "  Van  Stans  Improved  Cement,"  158,  note  62. 

"Velvet  Candy,"  343. 

"Vertical  Top,"  302. 

"  Very  Old  Stock  "  and  "  V.  0.  S.,"  485. 

"Vienna  Bread,"  253. 

"  Vitae-Ore  "  and  "  Vitalizing  Ore,"  270. 

"  Vonderbank  Hotel,"  100. 

"  Walnut  Grove  Dairy  "  and  "  Walnut  Park  Dairy,"  328. 

"  Wamsutta  "  and  "  Wamyesta,"  273. 

"  Waterfill  and  Frazier  Whiskey  "  and  "  Waterfill  and  Frazier  Dis- 
tillers," 161. 

"  Webster's  Dictionary,"  195,  note;  302. 

"  What  Cheer  House,"  177. 

"  White  Hungarian  Band,"  172. 

"William  Clark  Thread  Company;"  "The  William  Clark  Com- 
pany "  and  "  Clark's,"  154,  note  55. 

"  Wm.  Eogers  &  Son,"  134  et  seq. 


Index.  561 

NAMES— Continued. 

"  Whirling  Spray,"  262. 

"  Whitstable  Oysters/'  250. 

"  Willoughby  Lake,"  241. 

"  Wonderful  Magazine,"  18. 

"  Worcester  China,"  248. 

"(Woodbury's  Facial  Soap  "  and  "  Woodbury's  New  Skin  Soap,"  98. 

"  Yorkshire  Relish,"  250. 

NATURAL  PRODUCTS 

names  of,  245. 

NEW  BUSINESS 

naming  a,  right  to  use  one's  own  name  in,  145. 

NEWSPAPERS 

have  character,  reputations  and  individuality,  191,  192. 
locality  served  by  each,  important  in  fixing  rights  to  names,  193. 
names  of,  88. 
one  who  has  sold  out  a  newspaper  may  set  up  anew,  115. 

NEW  YORK  PENAL  CODE 

provision  against  false  statements  as  to  goods,  etc.,  414. 

NICKNAMES 

in  trade,  275. 

based  on  designs  used  on  goods,  316. 
or  catchwords  in  trade,  corporate  names  used  as,  205. 
in  trade,  value  of,  205. 
use  of  part  of  corporate  name  as,  218. 
family  names  as,  148. 
(See  Catchwords.) 

NON-USER 

length  of,  to  warrant  presumption  of  intent  to  abandon,  504. 

NOTICE 

improper  use  of,  115. 

cautionary,  use  of,  510. 

of  pendency  of  suit  may  be  given  by  circular,  411,  417. 

of  user,  15. 

to  defendant  of  existence  of  contract,  in  actions  for  interference 

with  contracts,  369,  373. 

(See  Circula.s.) 

36 


562  Index. 

NUMERALS 

to  denote,  grade  of  goods,  278. 

indicating  source  or  origin,  280. 

to  indicate  style,  281. 

as  names  of  goods,  278. 

use  of,  to  designate  series,  282. 

use  on  repair  parts,  299  et  seq. 

used  in  a  series  do  not  constitute  a  trade-mark,  282. 

OFFICERS 

of  corporation  as  parties  defendant,  443. 

"ONLY  HIGH  GRADE" 

use  of  phrase,  499. 

ORDERS 

giving  of,  evidence  of  fraud,  213,  214. 

partly  arranged  for  by  agent,  prior  to  agent's  discharge,  belong  to 
employer,  436. 

ORIGIN 

of  goods,  misrepresentation  as  to,  487. 
names  indicating  falsely,  236. 

ORIGINATOR 

of  an  article,  sale  of  article  by,  114. 

PACKAGES 

form  of  injunction  against  unfair  use  of,  454. 
similarity  in,  312,  343. 

similar,  unfair  use  not  cured  by  explanatory  phrase,  344. 
(See  Chapter  on  Dress.) 

PACKING 

goods  fraudulently,  337,  note. 

goods  so  as  to  pass  them  off  as  other  goods,  319,  320. 

PARTIES 

to  action  for  unfair  competition,  443. 

administrators  of  deceased  partner  as,  444. 

corporation  not  necessary  party  defendant  in  action  against  indi- 
viduals doing  business  under  corporate  name,  443,  444. 

who  may  be  made  defendants,  443. 

manufacturers  and  sellers  of  offending  article  may  be  joined  as 
defendants,  444. 


Index.  563 

PARTIES—  Continued. 

officers  of  corporation  may  be  made  defendants,  443. 
plaintiff,  who  may  join  as,  443,  444. 

stockholders  not  proper  parties  defendant  in  action  against  corpo- 
ration, 444. 
those  controlling  corporation  may  be  made  defendants,  444. 
unknown  principal  or  proprietor  may  be  sued  through  agent  as  sole 

defendant,  444. 
plaintiff  in  action  on  geographic  names,  who  may  be,  228. 

PARTNER 

decree  as  to  use  of  partnership  names  by  ex-partner,  456. 
right  to  partnership  name  on  dissolution,  116. 
retiring,  182. 

right  of,  to  name,  109. 

right  to  solicit  customers,  110,  114,  115. 
unfair  use  of  name  of  former,  117. 

PARTNERSHIP 

name  on  dissolution,  116. 

dissolution,  implied  contract  as  to  retiring  partner  resuming  busi- 
ness, 116. 
right  of  family  of  deceased  partner  to  name,  119,  120. 
right  to  name  in  absence  of  special  provision,  117,  118. 
name  of,  may  be  protected  against  corporations  formed  with  a  name 

similar  to  partnership  name,  207. 
name,  right  of  retiring  partner  to,  109. 
dissolution  by  death,  119. 

PARTS 

copying  a  single  feature  or  part,  293. 

or  features,  copying  many  of,  of  an  article,  311. 

of  machine^,  etc.,  sale  of.     (See  Repair  Parts.) 

PASSENGERS 

contract  with  transportation  company,  367. 

PASSING-OFF 

English  name  for  unfair  competition ;  what  is,  29,  41. 

goods  of  third  party,  41. 

off  surname,  what  constitutes,  125. 


564  Index. 

PATENTED 

articles,  right  to  control  sale  of,  by  contract,  380. 

and  those  made  by  secret  process,  difference  between,  382. 

copying  those  on  which  patent  has  expired,  281),  292,  298,  303. 
purchase  of,  carries  right  to  use  name,  302. 
misrepresentation  by  use  of  the  word,  494. 

PATENT-CLAIM 

misrepresentation  by  claim  of,  494. 

PATENTS 

effect  of  expiration  of,  298. 
expiration  of,  effect    on  name,  176,  303. 
expiration  of  and  unfair  competition,  299. 

sale  of  parts  of  patented  goods  after  patent  expires,  294,  295,  501. 
effect  of  expiration  of  patents  on  right  to  make  and  sell  repair 
parts,  299. 

PERCOLATION 

of  water,  stopping  of,  with  intent  to  injure,  355. 

PERIODICAL 

(See  Magazines.) 

PERSONAL  LIBEL  AND  TRADE  LIBEL 

difference,  396  et  seq. 

PERSONAL  NAME 

(See  Family  Name.) 
right  to  use  as  business  name,  126  et  seq. 

PERSONAL  WRONGS 

and  equitable  remedies  therefor,  37,  38. 

PERSONALITY 

good-will,  attaching  to,  178,  290,  296. 

PERSUADING 

another  to  break  a  contract,  352  et  seq. 

PERSUASION 

use  of,  to  procure  breach  of  contract,  injunction  against,  362. 
procuring  breach  of  contract  by,  371. 

PETITION 

form  of  prayer  in,  451. 


Index.  565 

PHOTOGRAPH 

use  of,  without  consent  of  subject,  223,  318. 

PHYSICAL 

requirements  of  articles,  79. 

PLACARDS 

libelous,  injunctions  against,  392. 

PLACE 

effect  of  moving  business  plant,  244. 

of  manufacture,  misrepresentation  as  to,  487. 

name  of,  right  to,  101. 

relation  of  trade  name  or  mark  to,  162. 
right  of  buyer  of  a  place  to  use  name  on  goods  made  there,  102,  103. 
(See  Location;  Geographic  oe  Place  Names.) 

PLAYS 

names  of,  193. 

PLEADING 

intent  to  deceive,  when  necessary,  54,  note  32a. 

PORTRAITS 

right  of  privacy,  39. 

right  to  use,  38. 

transfer  of,  105. 

use  of,  without  consent  of  owner,  222,  318. 

PRAYER 

of  petition,  form  of,  451. 

PREDECESSOR 

continuing  use  of  name  of,  491. 

PRELIMINARY  INJUNCTION. 

(See  Injunction.) 
when  issued,  445,  446. 

on  hearing  of.  important  and  basic  facts  will  not  be  determined,  448. 
instances  of  delay  which  have  been  held  to  bar,  511. 
laches  may  bar,  511. 

PRESUMPTION 

of  acquiescence  does  not  arise  from  exclusive  right  alone,  509. 
of  intent  cannot  be  based  on  unimportant,  improbable  facts,  62. 
of  contract  between  employer  and  employee  not  to  disclose  secret, 
430. 


566  Index. 

PRESUMPTION  —  Continued. 

"  every  person  must  be  understood  to  have  intended  to  do  just  what 
is  the  natural  consequence  of  his  act  deliberately  done,"  47,  50, 
note  21,  62. 
of  fraud  from  general  attempts  to  copy,  63. 
in  face  of  contract  provisions,  59,  60. 
from  threats  of  suit  not  followed  up  by  suit,  409. 
from  voluntary  adoption  of  or  change  of  name,  153. 
from  manner  of  telling  the  truth,  68. 
from  similarity  of  get-up  or  name,  62. 

based  on  selling  goods  so  that  vendees  may  pass  them  off  fraud- 
ulently, 65,  Q6. 
from  similarity  of  sound  of  names,  268. 

use  of,  name  of  an  incorporator  in  naming  a  corporation,  214. 
of  intent  to  abandon  from  proof  of  non-user,  504. 

arises  in  face  of  defendant's  disclaimer  of  intent,  59. 

from  making  copy  of  another's  goods,  61. 

to  deceive  on  part  of  incorporators  from  similarity  of  names, 

213,  214. 
to  bring  about  necessary  consequences  of  one's  acts,  47,   50, 
note,  21,  62. 
that  no  one  intends  to  part  with,  to  use  his  own  name,  97. 

PRICES 

not  a  trade  secret,  434. 

PRINCIPAL  OR  PROPRIETOR 

unknown  to  public  may  be  sued  through  agent,  444. 

PRINTERS 

who  contribute  to  doing  of  unfair  acts  may  be  held  liable  for  unfair 

competition,  41. 
of  labels,  etc.,  473. 
may  be  parties  defendant  jointly  with  person  who  does  unfair  acts, 

443. 

PRIORITY 

in  organization  of  corporations,  effect  on  name,  201,  note  5. 
rights  of,  as  to  name,  not  changed  by  prior  incorporation  of  one 

who  was  not  first  one  to  use  the  name,  199. 
in  use  of  name  or  mark,  56,  153,  181. 
rule  of,  in  use  of  geographic  or  place  names,  227. 
in  use  of  name  of  corporation,  215. 


Index.  567 

PRIORITY  —  Continued: 

not  wideness  of  reputation,  creates  secondary  meaning,  146. 
in  use  not  resulting  in  a  secondary  meaning,  146. 
length  of  time  necessary  to  create  right  of,  216. 

PRIOR  USE 

knowledge  of,  not  necessary  to  relief,  316. 

PRIVACY 

rights  of,  protected  by  equity,  39,  40. 

PRIVILEGE  IN  TORTS 

what  constitutes,  356  et  seq. 

PROBABILITY 

of  injury  ground  of  injunction,  445. 

PROCESS  OF  MANUFACTURE 

geographic  names  indicating,  247. 

PROFITS 

accounting  of,  barred  by  laches,  457. 

material  delay  bars,  509. 

may  be  ordered  against  one  fraudulently  using  secret,  436. 
court  will  not  speculate  as  to,  or  apportion,  460. 
deduction  of  expenses  of  defendant  from,  460. 
defense  that  defendant  received  none  of  the,  473. 
loss  of,  protection  against,  35. 
manufacture,  cost  of,  deducted  from  profits,  461. 
when  reference  to  master  to  determine  refused,  462. 
rules  for  computing  amount  due  as,  461. 
salaries  considered  in  computing,  461. 
sales,  what  are  considered  as,  in  computing,  461. 

PROOF— BURDEN  OF 

to  prove  secondary  meaning  is  on  plaintiff,  166. 
as  to  name  already  in  use,  146. 

PROPERTY 

in  a  business,  elements  of,  21,  392.       (See  Introduction.) 

equity  has  jurisdiction  to  protect,  37,  38. 

in  marks  and  names,  relation  to  intent,  43. 

in  names  not  trade-marks,  20. 

protection  of,  by  injunction,  against  libel  and  slander,  392  et  seq. 

right  of  complainant,  basis  of  action  for  unfair  competition,  34. 


568  Index. 

PROPERTY  —  Continued: 

rights  in  marks  not  technical  trade-marks,  20. 

in  names  or  marks,  character  of,  24. 

right  to  privacy  is  property,  39,  40. 

in  trade-marks  recognized  in  1838,  22. 

in  name  or  mark  not  necessary  to  action  for  unfair  competition,  23 

PUBLIC 

defense  that  plaintiff  is  defrauding  and  deluding  the  public,  476. 
names,  property  rights  may  be  acquired  in,  20. 
protection  of,  basis  of  unfair  competition,  31,  33. 
right  of,  to  be  dealt  with  fairly,  215. 

PUBLICATION 

of  secret,  effect  of,  420. 

divulging  secret  in  confidence  does  not  constitute,  420. 

PUBLICI  JURIS 

test  of  when  a  word  becomes,  261,  515. 

PURCHASERS 

class  of,  intellectual  capacity,  of,  habits  of  foreign  purchasers,  75,  76. 

need  not  compare  labels  on  goods  when  buying,  336. 

deceit  of  ultimate  purchaser,   not  jobber,   is  the   important  con- 
sideration, 81,  471. 

may  forget  name  of  maker  of  goods  he  buys,  yet  be  deceived,  55. 
(See  Customers.) 

QUALITY 

geographic  names  indicating,  256. 

of  goods,  fact  that  defendant's  goods  better  than  plaintiff's,  no  de- 
fense, 59. 
that  defendant's  are  cheaper  than  plaintiff's,  466,  467. 
indicated  by  letters,  words  or  figures,  297. 
misstating  in  selling,  324. 
refilling  containers  with  cheap  goods,  328. 

QUIA  TIMET 

applications  in  nature  of,  445. 

RAW  MATERIAL 

use  of  same  by  two  manufacturers,  effect  on  name,  240. 

READING 

matter  on  labels,  318. 

difference  in   disregarded   where   there  are  infringements   in 
other  features,  301. 


Index.  569 

RECEIVER'S  SALE 

rights  of  buyer  of  whole  business  as  to  name  of  the  business,  108, 
note  24. 

REDDAWAY  CASES 

discussed,  166. 

REFERENCE 

to  determine  profits  when  refused,  462. 

REFILLING 

(See  Bottles.) 

"  REGISTERED  " 

misrepresentation  by  use  of  word,  494,  496. 

REGISTRATION 

defense  that  name  of  defendant  is  capable  of,  468. 

effect  of,  6,  7. 

no  importance  where  name  copied  in  total,  265. 

of  labels,  331. 

of  corporate  names,  198. 

RELIEF 

temporary,  pending  trial  such  as  making  defendant's  name  more 
distinct,  448.     (See  Remedies.) 

REMEDIES 

(See  List  at  p.  441.) 
court  does  not  pass  on  defendant's  plans  to  correct  his  unfair  acts, 

452. 
destruction  of  list  of  customers  fraudulently  obtained,  439,  440. 
election  of,  by  plaintiff,  458. 
preliminary  injunction,  on  hearing  of,  important  facts  will  not  be 

determined,  448. 
stipulation  of  defendant  as  to  future  conduct  may  be  required  on 

preliminary  hearing,  449. 
use  of  explanatory  phrases,  450. 
jurisdiction  of  courts  in  unfair  competition  cases,  441. 
parties,  443. 

injunctions  before  act  committed,  445. 
applications  in  nature  of  quia  timet,  445. 
stipulation  as  to  defendant's  future  conduct,  449. 
preliminary  injunctions,  446. 
temporary  relief  pending  trial,  448. 


570  Index. 

REMEDIES—  Continued: 

injunctions  against  libel  and  slander  of  goods,    names,    etc.,  450. 

(See  Libel  and  Slander,  p.  389.) 
important  and  basic  facts  not  decided  on  application  for  preliminary 

injunctions,  448. 
destruction  and  delivery  up  of  offending  articles,  462. 
accounting  for  profits,  457. 

refused  when  injunction  not  granted,  462. 
final  relief, —  scope  of  permanent  injunction,  451. 
confusion  of  names  and  signs,  how  corrected,  453. 
confusion  of  color,  size,  form,  etc.,  how  corrected,  453. 
partner's  name,  injunction  against  use  of,  456. 
family  name,  injunctions  against  unfair  use  of,  454. 
damages,  457.     (See  Damages.) 

to  reputation  of  goods  to  be  considered,  458. 
exemplary,  459. 

expenses  of  defendant  deducted  from  profits,  460. 
contempt  of  court,  when  ordered,  462. 

REMOVAL 

(See  Location.) 
of  business,  effect  of  on  name,  173. 
of  plant  or  business,  effect  on  use  of  geographic  names,  244. 

REPAIR  PARTS 

are  numerals  and  letters  used  on,  trade-marks,  295. 
copying,  294. 

use  of  numerals  and  letters  on,  282,  301. 
use  of  name  belonging  to  another  dealer  in  marking,  295. 
.  effect  of  expiration  of  patents,  299  et  seq. 

REPRINTS 

of  books,  fraud  in,  195. 

REPUTATION 

of  defendant  being  greater  than  that  of  plaintiff,  effect  of,  457. 

extent  of,  168,  note. 

need  not  be  known  by  a  majority  of  people,  172. 

libel  and  slander  of,  388. 

priority  of  use,  not  extent  of  reputation  of  name,  creates  secondary 

meaning,  146. 
of  product  or  goods,  lost  through  defendant's  acts  to  be  computed 

with  loss  of  profits,  458. 
and  personalty,  178,  290,  296. 


Index.  571 

RESIDENCE 

former  right  to  advertise  facts  as  to  on  sale  of  business,  114. 

RETAIL  DEALER 

deceit  of  ultimate  purchaser,  not  jobber  or  retailer,  important,  81. 
procuring  breach  of  contract  to  sell  only  at  specified  price,  378. 
(See  Customer.) 

ROGERS 

silver  cases,  134  et  seq. 

SALARIES 

of  officers,  considered  in  computing  profits,  461. 

SALE 

of  business  site,  100. 

of  another's  goods  as  ones  own,  30. 

actual,  of  offending  goods  not  necessary  prerequisite  of  injunction, 

445. 
conditional,  of  goods  made  by  secret  formulae,  421. 
of  entire  business  rights  of  vendor,  96. 
right  of  vendor  to  use  names  used  by  concern  he  has  sold,  98,  noies 

6,  7,  8. 
of  a  name  or  business  by  originator  of  an  article,  114. 
of  a  business,  effect  of  locality  of  the  business,  115. 

(See  Transfer.) 

SALES 

agent,  procuring  breach  of  conditional  contract  by,  377. 

expense  of,  deducted  from  profits,  460. 

what  are  to  be  considered,  in  computing  profits,  461. 

SALESMEN 

expenses  of,  deducted  from  profits,  460. 
interference  with  competitor's,  385. 
interference  with  contracts  of,  364. 

order  partly  arranged  for  prior  to  discharge  of,  belongs  to  employer, 
436. 

SALIENT  FEATURES. 

(See  Similarity.)    78. 

SCHOOL 

name  of,  160. 


572  Index. 

SCIENTER. 

(See  Intent;  also  p.  45,  note.) 

SCIENTIFIC 

words  as  names,  263. 

SECONDARY  MEANING 

of  names,  37,  165. 

acquired  in  one  kind  of  business,  not  applicable  in  all,  236. 

of  names,  elements  of  proof  of,  168. 

identification  with  plaintiff,  167. 

recognition  in  locality  where  business  is  located  or  goods  sold, 
168,  169. 
of  family  name,  138. 

does  not  always  arise  from  priority  in  use,  146. 
locality  in  which  name  becomes  known,  172. 
of  names  of  merchandise,  261. 
of  geographic  names,  231. 

need  not  be  recognized  by  all  people,  or  even  a  majority,  172. 
plaintiff  must  prove  existence- of  acquired  meaning,  166. 
a  question  of  fact,  174 

question  of  priority,  not  of  wideness  of  repute,  146. 
of  semi-geographic  names,  Hoosier,  etc.,  170. 
time  of  user  necessary  to  acquire,  235. 
(See  Names.) 

SECRET  OF  TRADE 

(See  List  p.  420.) 
accounting  of  profits  from  unfair  use  of,  may  be  ordered,  436. 
approximation  of,  and  unfair  use  of  name  of  original,  250. 
assignment  of,  carries  right  to  protect,  438. 
betrayal  of,  by  employee,  427  et  seq. 
at  common  law,  419. 
conditional  sale  of  goods  made  by,  421. 
contracts  of  employment  sustain  implied  agreement  not  to  disclose, 

427,  430,  433. 
definition,  418,  419. 
difference  between  articles  made  by  and  patented  articles,  as  fo 

regulation  of  sale  of,  382. 
difference  between  sale  of  secret  itself  and  sale  of  goods  made  by 

use  of  it,  380. 
disclosure  of  by  employee,  enjoined,  365. 
by  employees,  430. 


Index.  573 

SECRET  OF  TRADE  —  Continued, 
disclosure  in  court,  effect  of,  424. 

discovered  by  employee  in  course  of  employment,  432,  433. 
divulging  in  confidence  not  publication,  420. 
effect  of  death  of  owner  of,  427. 

employee  may  not  disclose,  before  or  after  leaving  employer,  432. 
enjoining  breach  of  contract  forbidding  disclosure  of,  422. 
one  fraudulently  using,  may  be  compelled  to  account  for  profits,  436. 
facts  of,  are  property,  418,  419. 
French  penal  statute  regarding,  420. 

information  as  to  where  one  buys  material  not  a  secret,  434. 
information  obtained  by  agent,  may  not  be  afterward   employed 

against  principal,  435. 
knowledge  of,  obtained  unfairly,  enjoined,  426. 
lawful  discovery  of,  380,  425. 
letters  may  be  secret  property,  440. 
list  of  customers,  fraudulently  obtained,  may  be  ordered  destroyed, 

439,  440. 
list  of  customers  is  a  trade  secret,  438. 
name  of  jobber  furnishing  goods  may  be,  437. 
not  a  monopoly,  424. 
of  trade,  transfers  of,  123,  437. 
process,  goods  made  by,  once  sold  pass  beyond  control  of  maker,  380. 

inducing  breach  of  contract  for  sale  of  goods  made  by,  379. 
procuring,  breach  of  contract  regulating  sale  of   goods  made  by, 

enjoined,  381. 
publication  of,  effect  of,  418. 
right  of  owner  to  regulate  and  limit  those  to  whom  and  how  goods 

shall  be  sold,  424. 
sale  of  article  made  by  secret  formula,  not  publication  of  formula, 

420. 
to  warrant  protection,  likelihood  of  injury  to  plaintiff  from  dis- 
closure must  be  shown,  436. 
transfer  of,  437. 

which  are  unlawful  not  protected,  435. 
wrongfully  discovered,  title  to  good  against  all  except  owner  and 

assigns,  427. 

SELLING 

agents  may  be  parties  defendant  with  manufacturers  of  offending 

articles,  444. 
another's  goods  as  one's  own,  30. 


574  Index. 

series 

numerals  to  represent,  282. 

SERVANTS 

fraudulent  acts  of,  not  excused  by  orders  of  master  against  such 

acts,  61. 
interference  with  contracts  of,  363. 
statutes  against  interference  with,  363,  364. 

SHAPE 

(See  Form.) 
alone,  not  a  trade-mark,  82. 
imitation  of,  79. 
cannot  be  monopolized,  82. 

combined  with  other  features  producing  likeness  enjoined,  83. 
oval,  169,  note  5. 
similarity  in,  82. 
use  of  shape  of  patented  article  on  expiration  of  patent,  299. 

SIGNATURES 

copying  of  unfairly,  317. 

use  of,  without  consent  of  owners,  222. 

SIGNS 

fraudulently  locating,  184. 

may  be  definitely  associated  with  one  locality,  183. 

painting  building  in  peculiar  way  is  a  sign,  184. 

right  of  owner  to  move  a  sign  from  place  to  place,  183. 

right  to  use  signs  already  in  use,  184. 

similarity  in,  fraudulent,  185. 

transfer  of,  95. 

on  vehicles,  186. 

SILENCE 

does  not  warrant  inference  of  consent  to  use  by  another,  504,  507. 

SIMILARITY 
test  of,  71. 
care  used  by  average  buyer,  class  of  persons  using  article,  method 

used  in  selling  the  goods,  are  to  be  considered,  74,  75. 
in  color,  82. 

character  of  article  to  be  considered,  75. 
deceit  of  careless  buyer  not  considered,  74. 
color,  mere  diversity  in  not  controlling,  308. 


Index.  575 

SIMILARITY  —  Continued. 

colorable  imitation  often  constitutes,  73. 

comparison  of  articles  not  test  of,  77. 

comparison  by  expert  not  test  of,  72. 

in  construction  which  is  necessary  to  purpose  of  article,  262. 

created  without  cause  or  reason,  evidence  of  fraud,  64. 

definition,  70,  72. 

degree  of  in  dress  of  goods  calculated  to  deceive,  307. 

direct  comparison  of  articles  themselves  not  usual  test  of,  72. 

of  corporate  names,  what  is,  224. 

distance  between  competitors,  80. 

does  not  mean  exact  likeness,  fac-simile,  72. 

effect  of  cheapness  of  article,  76. 

evidence  of,  what  is,  213. 

equity  will  not  define  it  exactly,  73. 

features  common  to  a  trade,  58,  59. 

of  geographic  names,  degree  of  resemblance  necessary,  236,  245. 

habits  and  intelligence  of  consumer  to  be  considered,  75. 

of  names,  collection  of  cases  showing  what  is,  83. 

having  double  meaning,  276. 

as  appealing  to  eye,  267. 
similarity  in  sound,  idem  sonans,  267,  269,  272. 
must  deceive  ordinary  buyer  of  article,  70,  74. 
in  necessary  physical  requirements  of  article,  79. 
in  packages,  343. 
relation  to  similarity,  262. 
of  salient  features,  78. 
in  shops,  82. 

shown  by  general  impression  not  comparison  in  detail,  67,  68,  71. 
in  size,  82. 

SIMULATION  OF  ARTICLES 

themselves.     (See  List,  p.  285,  and  Copying.) 

SITE  OF  BUSINESS 

sale  of,  effect  on  names,  100. 

SIZE 

alone,  not  a  trade-mark,  82. 

combined  with  other  features  producing  likeness,  enjoined,  83. 

cannot  be  monopolized,  82. 

similarity  in,  82,  285. 


5 1  (J  Index. 

SOURCE 

name  indicating  falsely,  236,  487. 
numerals  indicating,  280. 

SOCIETIES 

unincorporated  names  of,  223. 

"  SOLE  AGENT " 

use  of  term,  492. 

SPRING 

natural,  right  to  name  on  sale  of,  100,  245. 

STATE  LAWS 

as  to  corporate  names,  198. 

STREET 

addresses,  24,  186. 

STIPULATION 

as  to  defendant's  future  conduct  may  be  required  on  preliminary 
hearing,  449. 

STOCK 

articles  in  common  use,  use  of,  314. 

STOCKHOLDER. 

(See  Corporate  Names.) 
outgoing,  rights  of,  217. 

not  proper  parties  defendant  in  action  against  corporation,  444. 
retiring,  right  to  solicit  customers,  110,  114. 
rights  of  retiring  stockholders  to  corporate  name,  109. 
use  of  name  of,  in  name  of  corporation,  limits  to,  212,  218. 

STONE  ALE 

case,  138. 

STORES  AND  BUILDINGS 

fraud  in  location  of,  330,  453.     (See  Buildings.) 

STYLE  OF  GOODS 

numerals  to  represent,  281. 

SUBSTITUTION 

of  inferior  goods  for  better  goods  in  marked  containers,  324,  327. 
of  names  may  create  secondary  meaning,  167. 


Index.  577 

"SUCCESSOR  TO" 
use  of  term,  181. 

SURNAME 

(See  Family  Name.) 
unfair  use  of,  cured  by  use  of  full  name,  131. 
acquired  otherwise  than  by  consent,  150. 

TABLET 

of  medicine,  copying  form  of,  310. 

TECHNICAL 

trade-marks,  what  are,  definitions,  3-5.     (See  Trade-marks.) 

TELEPHONE  NUMBER 
unfair  use  of,  11-1. 

TEMPORARY 

relief  pending  trial,  such  as  making  defendant's  name  more  distinct, 
448. 

THEATRE 

right  of  lessee  of,  to  use  name  of,  103. 

THIRD 

persons,  defense  that  plaintiff  has  acted  unfairly  to,  475. 

THREATENED 

acts  may  be  enjoined  before  any  overt  is  committed,  445. 

THREATS 

of  prosecution,  388,  403. 

circulars  threatening  customers  made  with  intent  to  intimidate  cus- 
tomers, not  to  fairly  warn  them,  408. 

injunction  against,  400,  410. 

must  they  accompany  acts  of  interference  with  contract  ?  365. 

presumed  fraudulent  if  not  followed  up  by  suit,  409. 

of  prosecution,  theory  that  proof  of  must  exist  to  warrant  issuance 
of  injunction  against  libel  or  slander,  406. 

of  suit,  interference  with  contract  by,  387. 

TIME 

lapse  of,  which  shows  abandonment,  503. 

TITLE 

defense  that  title  of  plaintiff  is  not  established,  474. 


578  Index. 

TOBACCO 

tags,  320. 

TORTS 

justification  in,  what  constitutes,  355. 
privilege,  355. 
malice,  354. 

TRADE 

right  to,  not  an  absolute  one,  19. 

or  business,  resemblance  in  features  common  to,  313. 

interference  with,  unlawful,  20. 

TRADE-MARKS 

(See  Marks.) 
law  of,  is  specialized  branch  of  law  of  unfair  competition,  7. 
law  of,  and  law  of  unfair  competition,  difference  between,  7,  10. 
property  in,  recognized  in  1838,  22. 
as  sign  of  identity,  104. 
constitute:  1.  sign  manual  of  owner;  2.  guarantee  against  deception 

of  public,  14. 
statutes,  United  States,  4. 
decisions  as  to  effect  of,  5,  6. 
effect  of,  generally,  6. 
technical,  property  rights  in,  20. 
characteristics  of,  104. 
differs  from  trade-name,  174. 
are  geographical  in  character  and  are  limited  territorially,  11. 

TRADE-NAMES 

(See  Name.) 
definition,  260. 

transfer  of,  95.     (See  Transfer.) 

difference  between  law  of,  and  law  of  unfair  competition,  7. 
differ  from  trade-mark,  174. 

TRADE  SECRETS 

and  confidential  relations.     (See  List,  p.  418.) 
(See  Secrets.) 

TRADE  TALK 

misrepresentation  in,  498. 


Index.  579 

TRANSFER 

by  attorney  of  practice,  112. 

in  bankruptcy  and  assignments  for  creditors,  107. 

name  not  assignable  in  gross,  102,  104. 

in  bankruptcy  or  assignment  for  creditors,  107. 

of  a  business,  156,  157. 

of  business  by  one  using  trade-name  of  another  under  contract,  105. 

of  business  site,  effect  of  on  names,  100. 

of  names  and  marks,  by  descent,  121. 

good  faith  required  in,  105,  210. 

of  names.     (See  Sale.) 

name  or  mark  may  not  be  sold  separate  from  article  to  which  it  is 
attached,  101. 

no  one  has  right  to  transfer  his  surname  for  use  that  is  unfair, 
152,  210,  211. 

of  place  name  used  as  name  of  goods  when  place  itself  is  sold,  101. 

of  business  site,  right  of  buyer  to  use  name  of  the  place  as  trade- 
name, 103. 

of  portraits.  105. 

of  secrets,  123,  437. 

of  secret  by  assignment,  carries  right  to  protect  it,  438. 

of  trade-names,  signs,  marks,  etc.,  95. 

TRIVIAL  ACTS 

court  does  not  notice,  474. 

TRUTH 

defense  that  defendant's  representations  are  true,  469. 

equity  will  not  enjoin  against  telling,  469. 

must  be  told  honestly,  469. 

told  fraudulently,  469. 

presumption  of  fraud  from  manner  in  which  it  is  told,  68. 

UNFAIR 

acts  tend  to  do  away  with  competition,  358. 

UNFAIR  COMPETITION 

action,  grounds  of,  30. 

by  claiming  qualities,  titles,  etc.,  without  right,  29. 

colloquial,  meaning  of,  30. 

definitions  of,  24,  30. 

does  not  curtail  freedom  of  honorable  trading,  19. 

developed  in  last  fifty  years,  10,  11. 

early  cases  of,  11,  14,  19. 


580  Index. 

UNFAIR  COMPETITION  —  Continued. 

essence  of  wrong  in,  209. 
foundation,  principle  of,  9. 

grounds  of  action  for,  may  be  protection  of  individual  and  of  pub- 
lic, 37. 
growth  of  doctrine,  13,  306. 
not  included  in  term  trade-mark,  1,  2. 
does  not  involve  violation  of  any  exclusive  right,  8. 
law  of,  foundation  of,  12. 

name  "  unfair  competition  "  new,  not  the  doctrine,  13. 
is  question  of  representation,  18,  29. 
tendency  of  present  growth  of  doctrine  of,  11. 
and  trade-marks,  difference  between,  7,  10. 
and  similarity,  262. 

concurrence  de  loyal,  French  name  for  doctrine,  29. 
passing  off,  English  name  for  doctrine,  29-41. 
property  rights  in,  20. 
differs  from  technical  trade-marks,  7. 

exclusive  right  to  name  or  mark  not  necessary  to  action  for,  23. 
selling  another's  goods  as  one's  own  is,  30. 

theory  that  in  these  actions  court  aims  to  protect  honest  and  fair 
dealing,  30. 

in  these  actions  court  aims  to  protect  purchasing  public,  31. 

in  these  actions  court  aims  to  protect  not  public,  but  individual 
rights,  33. 
acts  contributory  to  unfair  acts,  41. 

UNFAMILIAR 

words  as  names,  263. 

UNLAWFUL 

secrets  not  protected,  435. 

USE 

continuation  of,  after  knowledge  of  prior  use,  is  evidence  of  fraud, 

58. 
priority  in,  56. 

USELESSNESS 

of  plaintiff's  goods  no  defense,  475. 

USER 

does  not  always  create  ri^ht  in  name,  25. 
effect  of,  on  name,  15. 


Index.  581 

USER—  Continued. 

universal  knowledge  of,  not  required  as  to  geographic  names,  232. 
time  of,  necessary  to  acquire  secondary  meaning,  235. 
no  distinction  between  names  and  marks  as  regards  user,  24. 
may  cause  surnames  to  become  abstract  names,  144. 

VEHICLES 

signs  on,  186. 

VENDOR 

rights  of,  on  sale  of  entire  business,  96. 
of  names,  etc.,  good  faith  required  of,  105. 
(See  Transfer  and  Sale.) 

WAGONER 

good-will  of,  91. 

WAGONS 

fraudulent  get-up  of,  328. 

WHOLESALERS 

procuring  breach  of  contract  to  sell  only  to  specified  retailers,  378. 

WORD 

separation  of  into  two  or  more  words,  effect  of,  475. 

WORKMEN. 

(See  Employees.) 

WORKS 

or  factories,  good-will  of,  90. 

"  WORKS  " 

use  of  term  by  incorporated  company,  216. 

WORTHLESSNESS 

of  plaintiff's  goods  no  defense,  475. 

WRAPPERS 

etc.,  312,  321. 

(See  List,  p.  305.) 
printing  on,  fraudulent,  343,  344. 

CO." 

Bee  of  the  abbreviation,  188. 


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